Delhi High Court
Semco Infratech Pvt Ltd & Ors. vs Simla Chemicals Pvt Ltd & Anr. on 19 May, 2022
$~1 with 21 to 26
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 19th May, 2022
+ CM (M)-IPD 10/2022 & CM APPL.18156/2022
SEMCO INFRATECH PVT LTD & ORS. ..... Petitioners
Through: Mr. Neeraj Malhotra, Sr. Advocate
with Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Nimish Kumar,
Advocates. (M:9868401295)
versus
SIMLA CHEMICALS PVT. LTD. & ANR. ..... Respondents
Through: Mr. Sanjeev Singh and Ms. Kusum
Khatari, Advocates.
21 WITH
+ C.O. (COMM.IPD-TM) 111/2022
M/S.SEMCO INFRATECH PVT LTD ..... Petitioner
Through: Mr. Neeraj Malhotra, Sr. Advocate
with Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Nimish Kumar,
Advocates.
versus
M/S.SIMLA CHEMICALS PVT. LTD. ..... Respondent
Through: Mr. Sanjeev Singh and Ms. Kusum
Khatari, Advocates.
22 WITH
+ C.O. (COMM.IPD-TM) 123/2022
SEMCO INFRATECH PVT LTD ..... Petitioner
Through: Mr. Neeraj Malhotra, Sr. Advocate
with Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Nimish Kumar,
Advocates.
versus
SIMLA CHEMICALS PVT. LTD. & ANR ..... Respondents
Through:
23 WITH
+ C.O. (COMM.IPD-TM) 158/2022
SEMCO FORGE PVT LTD. ..... Petitioner
Signature Not Verified
By:DEVANSHU
JOSHI
Through: Mr. Neeraj Malhotra, Sr. Advocate
with Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Nimish Kumar,
Advocates.
versus
SIMLA CHEMICALS PVT. LTD. & ANR. ..... Respondents
Through:
24 WITH
+ C.O. (COMM.IPD-TM) 218/2021
SEMCO INFRATECH PVT LTD ..... Petitioner
Through: Mr. Neeraj Malhotra, Sr. Advocate
with Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Nimish Kumar,
Advocates.
versus
SIMLA CHEMICALS PVT. LTD. & ANR. ..... Respondents
Through: Mr. Sanjeev Singh and Ms. Kusum
Khatari, Advocates.
25 WITH
+ C.O. (COMM.IPD-TM) 373/2021
SEMCO INFRATECH PVT LTD ..... Petitioner
Through: Mr. Neeraj Malhotra, Sr. Advocate
with Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Nimish Kumar,
Advocates.
versus
SIMLA CHEMICALS PVT. LTD. & ANR. ..... Respondents
Through: Mr. Sanjeev Singh and Ms. Kusum
Khatari, Advocates.
26 WITH
+ C.O. (COMM.IPD-TM) 655/2022
SEMCO INFRATECH PVT LTD ..... Petitioner
Through: Mr. Neeraj Malhotra, Sr. Advocate
with Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Nimish Kumar,
Advocates.
Signature Not Verified
By:DEVANSHU
JOSHI
versus
SIMLA CHEMICALS PVT. LTD. & ANR. ..... Respondents
Through: Mr. Sanjeev Singh and Ms. Kusum
Khatari, Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. The disputes in these cases relate to the trademarks SIMCO and
SEMCO. Respondent No.1/Plaintiff -'Simla Chemicals Pvt Ltd'(hereinafter
"Plaintiff") adopted the mark SIMCO in 1948 for various products falling in
Class 3 and Class 5. The main Defendant/Petitioner-SEMCO Infratech Pvt
Ltd' (hereinafter "Defendant") and related parties, adopted the mark
'SEMCO' in respect of machine tools, real estate, construction, etc. The
Plaintiff had filed a suit seeking permanent injunction restraining
infringement, as also reliefs for passing off, damages etc., being
CS(COMM.) No.381/2020 titled Simla Chemicals Pvt. Ltd. v. SEMCO
Infratech Pvt. Ltd. & Anr., before the ld. District Judge, Commercial Court-
02, Shahdara, Karkardooma Courts, Delhi (hereinafter "Commercial
Court"). The prayers in the suit are as under:
"43.The plaintiff, under the above stated facts and
circumstances, prays:-
(a) For a decree of permanent injunction
restraining the defendants by themselves as also
through their directors, proprietors, individual
proprietor, partners (if any), agents, servants, assigns,
representatives, successors, distributors and all others
acting for and on their behalf from using, selling,
exporting, offering for sale, advertising or displaying
directly or indirectly or dealing in any other manner or
Signature Not Verified
By:DEVANSHU
JOSHI
mode in relation to any of its
business/services/goods/products under the impugned
trade mark/name SEMCO or any other trade mark/
label identical with or deceptively similar to the trade
mark SIMCO of the plaintiff amounting to or resulting
in:-
(i) Infringement and violation of the plaintiff's
registered and well-known trademark SIMCO;
(ii) Passing off impugned goods under the
impugned trademark/name SEMCO as the goods of the
plaintiff there by violating common law rights of the
plaintiff in its trade mark SIMCO;
(b) For an order for delivery up of all the
defendants impugned goods and business bearing the
impugned trade mark including packing material,
bottles, carton boxes, carry bags, finished and
unfinished goods, boxes, stickers, or any other
incriminating material including display boards and
sign boards and trade literature to the plaintiff for the
purpose of destructions/erasure.
(c) For an order of rendition of account of the
defendants by their aforesaid impugned trade activities
and a decree to the plaintiff on the amount so
ascertained.
(d) In alternative to accounts for a decree for
grant of damages of Rs.3,05,000/- (Rupees three Lacs
five thousand Only) from the defendants, jointly and
severally to the plaintiff.
(e) For such further order as this Hon'ble Court
may deed fit and proper in the circumstances of the
case and in the interest of justice."
3. Vide order dated 20th July, 2022, the Commercial Court considered
the application for interim injunction and the application for appointment of
a Local Commissioner, and granted the same in favour of the Plaintiff. The
relevant extract of the said order reads as under:
"32. Considering the facts and in view of
Signature Not Verified
By:DEVANSHU
JOSHI
above discussion, I am of the considered view
that plaintiff has make out prima facie case in
its favour for granting interim injunction.
Further, balance of convenience also lies in
favour of the plaintiff as if defendant
continues to infringe the trademark of the
plaintiff, the same shall cause inconvenience
to the plaintiff. The plaintiff shall also suffer
from irreparable loss and injury if ex parte ad
interim injunction is not granted in its favour
at this stage. Accordingly exparte ad interim
is hereby granted in favour of the plaintiff and
against the defendants as follow:-
(i) Restraining the defendants themselves as
also through through their directors,
proprietors, individual proprietor, partners (if
any), agents, servants, assigns,
representatives, successors, distributors and
all others acting for and on their behalf from
using, marketing, selling, offering for sale,
advertising or displaying directly or
indirectly or dealing in any other manner or
mode in relation to any of its business/
services/ goods/products under the impugned
trade mark/name SEMCO or any other trade
mark/label identical with or deceptively
similar to the plaintiff's said well known trade
SIMCO and from doing any act as is likely to
cause confusion and deception and passing of
defendant's goods and business as and for the
business and goods of the plaintiff and from
causing infringement and passing off and
violation of the plaintiff's said trademark
SIMCO.
xxx
45. Accordingly, the application of the
plaintiff under Order 26 Rule 9 read with
Section 151 of the CPC for appointment of
Signature Not Verified
By:DEVANSHU
JOSHI
Local Commissioner is hereby allowed and
directions for ex parte ad interim injunction
are given in the application of the plaintiff
under order 39 Rules 1 & 2 of the CPC read
with section 151 CPC."
4. Thereafter, vide order dated 11th August, 2020, it was clarified by the
Commercial Court that the injunction order was applicable only qua
sanitizers and not in respect of other products of Defendant No.1. The
relevant portion of the said order reads as under:
"5. In the circumstances, in view of the
submissions made the order dated 20.07.2020 is
clarified that the injunction is qua only
regarding the Sanitizer arid not in respect of the
other products of defendant no. 1."
5. During the execution of the local commission, several goods were
found at the premises of Defendant No.1, which included inter alia,
sanitizers, face masks, surface disinfectant sprays and hypochlorites. This
seizure of products other than sanitizers was challenged by Defendant No.1
as being contrary to the clarification dated 11th August, 2020. Accordingly,
the Commercial Court vide order dated 23rd September, 2020 directed
release of masks seized, while holding that the release of the disinfectant
sprays and hypochlorite solution seized would have to be decided along with
the injunction application. In the meantime, Defendant No.1 had filed its
written statement before the Commercial Court which stated that it was
dealing in different goods and had different group entities. Accordingly, the
Plaintiff moved an application under Order VI Rule 17 CPC read with Order
I Rule 10 CPC, seeking to incorporate the various goods produced by the
Defendants, to the list of impugned products as also to implead other group
Signature Not Verified
By:DEVANSHU
JOSHI
entities of the Defendants, which was allowed by the Commercial Court
vide the impugned order dated 10th January 2022. The Commercial Court
allowed the applications, permitting the addition of the group companies of
the Defendants to the suit pending between the parties, as also the addition
of some impugned products. The relevant extracts of the impugned order are
as under:
" At the outset, there is no dispute that the
amendment sought to be made is the outcome of
the averments made by the defendant in the written
statement and the application under Order 39 Rule
4 CPC. Though it is averred that the plaintiff was
very much aware about defendant no.1 and its
group of companies from the very beginning,
however, in view of the judgment in Lakha Ram
Sharma's case (Supra), the question whether or not
the claim made in the application is bonafide or
not is to be decided at the trial of the suit.
The judgment relied by Ld. Counsel for
defendant in Revajeetu Builders and Developers
Vs. Naraina Swami and Sons & Ors. in Civil
Appeal NO.6291/2009 pronounced on 09.10.2009
by the Apex Court, the judgment titled Colgate
Palmolive Company & Ors. Vs. Anchor Health
and Beauty Care Pvt. Ltd. FAO (OS) 131/2012
decided on 19.07.2015 relied upon by Ld. Counsel
for defendant are not applicable to the facts and
circumstances of this case since the amendment
sought to be made in the present case is the
outcome of the written statement filed by the
defendant and thus a subsequent event which could
not have been known to the plaintiff as claimed, at
the time of filing of the present case. The
contention of Ld. Counsel for defendant that the
plaintiff was aware of the said facts before the
filing of the present suit is a matter of evidence.
Signature Not Verified
By:DEVANSHU
JOSHI
The amendment sought to be made by the plaintiff
is also necessary to decide the controversy in
question completely and also to avoid the
multiplicity of the litigation since admittedly the
other group of companies of defendant are also
dealing in the same goods under the impugned
trademark SEMCO.
The plea with regard to the order dated
11.08.2020 does not come in the way of the present
application since the written statement has been
filed on 31.08.2020 i.e. after the clarification order
was passed by Ld. Predecessor of this Court. It is
also pertinent to mention here that the amendment
proposed to be made does not at all change the
nature of the suit. The matter is at the initial stage
since the trial has yet not commenced. Hence, no
prejudice shall be caused to defendant no.1 if the
application for amendment is allowed.
In view of the above discussion, application
under Order VI Rule 17 read with Order 1 Rule 10
and read with 151 CPC moved by plaintiff is
allowed."
6. The present petition challenges the said order. On the previous date of
hearing before this Court, i.e., 22nd April, 2022, after hearing ld. counsels
for the parties, the following order was passed:
"5. After some hearing, it appears that the
Defendants are using the mark 'SEMCO' in
respect of the specific category of products and
services. Let a detailed list of products and
services for which the mark and name 'SEMCO'
is currently being used by the Defendants be
produced before the Court on the next date.
6. Respondents/Plaintiffs shall also bring a
list of registrations it has for the mark 'SIMCO'
under various classes.
7. Both the parties are directed to produce a
Signature Not Verified
By:DEVANSHU
JOSHI
list of proceedings which are pending between
them."
7. Today, the parties are also present in Court along with their counsels
and have made submissions. It appears that there are various apprehensions
on behalf of the Plaintiff that the Defendants may use the mark 'SEMCO' in
respect of cognate and allied products. The Plaintiff's mark is currently
being used for goods falling in Classes 3 and 5 and is also registered in
various classes. The Defendants on the other hand, submit that the primary
business of the Defendants is the manufacture of machine, machine tools
and other industrial products. The Defendants also acknowledge that the
Plaintiff has various registrations for the mark 'SIMCO' across several
classes. However, the claim of the Defendant is that in a number of such
classes, the Plaintiff is not using the mark. In response to this submission,
the stand of the Plaintiff is that the Plaintiff has registered the mark
'SIMCO' in several classes for better protection of the mark.
8. It is also noticed by this Court that there are various cancellation
petitions and other proceedings including opposition proceedings, which are
pending between the same parties. The said list of pending cancellation
proceedings on behalf of M/s. Semco Infratech Pvt. Ltd. seeking removal of
the marks from the register or rectification of the register under Section
47/57/125 of the Trade Marks Act, 1999, are as under:
SL. NO. CASE PARTICULARS MARK AND APPLICATION
1 CO(COMM-IPD TM) 158/2021 For removal of trade mark SIMCO
titled Semco Forgo Pvt Ltd v. registered under no. 3118279 in
Simla Chemicals Pvt Ltd. class 6 in the name of M/s. Simla
Chemicals Pvt. Ltd.
Signature Not Verified
By:DEVANSHU
JOSHI
2 CO(COMM-IPD TM) 123/2022 For removal of trade mark SIMCO
titled Semco Infratech Pvt Ltd v. registered under no. 978638 in class
Simla Chemicals Pvt Ltd. 12 in the name of M/s. Simla
Chemicals Pvt. Ltd.
3 CO(COMM-IPD TM) 111/2022 For removal of trade mark SIMCO
titled Semco Infratech Pvt Ltd v. registered under no. 978633 in class
Simla Chemicals Pvt Ltd. 7 in the name of M/s. Simla
Chemicals Pvt. Ltd.
4 CO(COMM-IPD TM) 373/2022 For removal of trade mark SIMCO
titled Semco Infratech Pvt Ltd v. registered under no. 978637 in class
Simla Chemicals Pvt Ltd. 11 in the name of M/s. Simla
Chemicals Pvt. Ltd.
5 CO(COMM-IPD TM) 218/2021 For removal of trade mark SIMCO
titled Semco Infratech Pvt Ltd v. registered under no. 978635 in class
Simla Chemicals Pvt Ltd. 9 in the name of M/s. Simla
Chemicals Pvt. Ltd.
6 CO(COMM-IPD TM) 655/2022 For removal of trade mark SIMCO
titled Semco Infratech Pvt Ltd v. registered under no. 978634 in class
Simla Chemicals Pvt Ltd. 8 in the name of M/s. Simla
Chemicals Pvt. Ltd.
9. The details of the opposition proceedings are as under:
S. APPLICAT OPPOSIT
CLASS PARTIES MARK
NO. ION NO. ION NO.
4635044 11 1070528 Applicant:
Semco
[Water purifying apparatus and Infratech
machine, R.O., Water treatment Pvt. Ltd.
plant, drinking water treatment
plants sewage treatment plants, Opponent:
Signature Not Verified
By:DEVANSHU
JOSHI
industrial water treatment, Simla
industrial wastewater treatment Chemicals
plants, water treatement Pvt. Ltd.
apparatus, machine and
components, water filter, electric
water filter, water softener, water
supply and sanitary purpose,
water cooler, water dispenser,
water purification system water
boiler, fans, exhaust fans, coolers,
air conditioners, refrigerators,
toaster, geysers, electric oven,
electric kettle, electric roti maker,
heat convectors, heaters, heating
element, heating rod, hot water
boiler, solar light, led light &
bulbs, CFL, tube light, night
lights, table lamps, halogen
lamps, CFL lamps and tubes,
bulbs, torches, electric emergency
light, induction, electric
luminaires, led luminaires,
cooker, electric hot plates for
cooking, gas lighters, electric gas
stove and their parts included in
class 11.
4635038 11 1070529
[Fans, exhaust fans, coolers, air
conditioners, refrigerators, toaster,
geysers, electric oven, electric
kettle, electric roti maker, heat
convectors, heaters, heating
element, heating rod, hot water
boiler, solar light, led light &
bulbs, CFL, tube light, night lights,
table lamps, halogen lamps, CFL
lamps and tubes, bulbs, torches,
Signature Not Verified
By:DEVANSHU
JOSHI
electric emergency light,
induction, electric luminaires, led
luminaires, cooker, electric hot
plates for cooking, gas lighters,
electric gas stove and their parts
included in class 11.]
10. Considering the large number of disputes between these parties, ld.
Counsels have made submissions to the effect that the Defendants would
restrict the use of the mark SEMCO for some goods and services, so that the
disputes can be finally resolved, without any ambiguity. The Plaintiff also
has no objection in the Defendants using the mark SEMCO for some
products and services as elaborated below.
11. In this view of the matter, at the outset, it is deemed appropriate to
consolidate the various proceedings between the parties. Ld. Counsels for
the parties also consent to the same. Accordingly, in terms of Rule 26 of the
Delhi High Court Intellectual Property Rights Division Rules, 2022
providing for consolidation of IPR proceedings, the suit before the
Commercial Court being CS(COMM.) No.381/2020 shall stand transferred
to this Court. Additionally, with the consent of parties, the rectification
petitions which have been transferred from the IPAB, have been called for
and listed before this Court today.
12. The Plaintiff and the Defendants are duly represented by the parties
who are present and in consultation with their respective counsels, have
agreed to amicably resolve their disputes by broadly dividing/delineating the
products and services for which the Defendants would use the mark
'SEMCO' and the Plaintiff would use the mark 'SIMCO'. The following are
the terms and conditions of the agreement between the parties:
Signature Not Verified
By:DEVANSHU
JOSHI
(i) The Defendants acknowledge the Plaintiff to be the owner of
the mark 'SIMCO' for various goods falling in Classes 3 and 5. The
Defendants also acknowledge that the Plaintiff has various
registrations for the mark 'SIMCO' across several classes.
(ii) The Defendants shall henceforth restrict the use of the mark
'SEMCO' for the following products/services. For the sake of clarity,
the class in which the said products/services fall is also mentioned:
CLASS DEFENDANTS' PRODUCTS/SERVICES
Class 4 Industrial oils and greases; lubricants; dust absorbing,
wetting and binding composition; fuels (including motor
spirit) and illuminates; candles, wicks
Class 6 Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for
railway tracks; non-electric cables and wires of common
metal; ironmongery, small items of metal hardware; pipes
and tubes of metal; safes; goods of common metal not
included in other classes; ores.
Class 7 Machines and Machine tools, motors, engines,
components, agricultural implements etc.
Class 8 Hand tools and implements and other products falling in
Class 8.
Class 9 Batteries and other electrical products falling in Class 9.
However, the Defendant shall not use the mark 'SEMCO'
for software or IT related product/services.
Class 10 Medical dental and surgical apparatus and instruments and
Signature Not Verified
By:DEVANSHU
JOSHI
other products falling in Class 10, except masks and
sanitizers.
Class 11 Apparatus for lighting, heating, steam generating, cooking,
refrigerating, drying ventilating, water supply and sanitary
purposes, including water purifying equipment, and other
products falling in Class 11.
Class 12 Automobiles, vehicles apparatus for locomotion by land,
air or water.
Class 13 Firearms; ammunition and projectiles; explosives
fireworks.
Class 14 Precious metals and their alloys and goods in precious
metals or coated therewith, not included in other classes;
horological and other chronometric instruments, except
gems and jewellery.
Class 19 Building materials, (Non-metallic), non-metal rigid pipes
for building; asphalt, pitch and bitumen; non-metallic
transportable buildings; monuments, not of metal.
Class 35 Insofar as promotion/advertising of various products for
which they are entitled to use the mark SEMCO/SIMCO,
both parties are entitled to use the mark
'SEMCO'/'SIMCO' respectively, as per the delineation in
the present settlement.
Class 36 Only real estate affairs
Class 37 Building, construction, repair and installation services.
Class 39 Transport; Packaging and storage of goods; travel
Signature Not Verified
By:DEVANSHU
JOSHI
arrangements
Class 42 Only industrial analysis and research services except
computer software and IT.
(iii) The Defendants shall be entitled to obtain registrations of the
mark 'SEMCO' for the goods and services set out above, in terms of
the present settlement.
(iv) Insofar as the Plaintiff is concerned, it shall own the mark
'SIMCO' and it is free to expand its products/ services into any other
goods/services, except the ones set out above, for which the
Defendants would be using the mark SEMCO. The Plaintiff shall,
however, be entitled to retain its registrations for the mark SIMCO
even in respect of products/services, that the Defendants are entitled
to use as per the above settlement, so as to ensure that the Plaintiff can
protect such marks against any third-party infringing use. However,
the Plaintiff shall not enforce such trademark registrations against the
Defendants.
(v) The Defendants would be entitled to obtain registration/pursue
their pending applications in respect of the goods/services specified
above. In respect of all other goods and services the Plaintiff shall be
permitted to obtain fresh registrations. The existing registrations of
the Plaintiff in respect of goods which fall in the Defendants' share,
shall however continue in the Plaintiff's favour for the sake of
protection of the rights in the mark SIMCO against third parties,
unrelated to the Defendants.
13. The above settlement has been arrived at between the parties, who are
Signature Not Verified
By:DEVANSHU
JOSHI
appearing before the Court today. The Plaintiff is represented by Mr. Kuldip
Singh Bagga, the Director/ Promoter of the Plaintiff and the Defendants are
represented by Mr. Neeraj Kumar Singhal who is the Director/Promoter of
the Defendant No.1-company.
14. In view of the above settlement, the suit so transferred being
CS(COMM) 381/2020, stands decreed in terms of the above settlement. The
rectification petitions being CO(COMM-IPD TM) 158/2021, CO(COMM-
IPD TM) 123/2022, CO(COMM-IPD TM) 111/2022, CO(COMM-IPD
TM) 373/2022, CO(COMM-IPD TM) 218/2021, CO(COMM-IPD TM)
655/2022 also stand disposed of in the said terms. Decree sheet be drawn in
terms of the settlement recorded above, by the Registry of this Court. The
present petition being CM(M) IPD 10/2022 also stands disposed of. All
pending applications are disposed of.
15. The opposition proceedings, shall be disposed of by the office of the
Registrar of Trade Marks, in terms of the present settlement.
16. Copy of today's order be communicated to the Trademark Registry
(Address: Trademarks Registry, New Delhi, Boudhik Sampada Bhawan,
Plot No. 32, Sector 14, Dwarka, New Delhi-110078; Email: cgoffice-
[email protected], [email protected]) as also to the Ld. District Judge-02,
Commercial Court, Shahdara, Karkardooma Courts, Delhi in CS(COMM.)
No.381/2020 titled Simla Chemicals Pvt. Ltd. v. SEMCO Infratech Pvt.
Ltd. & Anr.
PRATHIBA M. SINGH
JUDGE
MAY 19, 2022
dj/ms
(corrected & released on 24th May, 2022)
Signature Not Verified
By:DEVANSHU
JOSHI
