Delhi High Court
Vivek Kochher & Anr vs Kyk Corporation Ltd & Ors on 23 September, 2022
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 23.09. 2022
+ RFA(OS)(COMM) 3/2020 & CM APPL. 2244/2020
VIVEK KOCHHER & ANR ..... Appellants
Through: Mr. Satish Kumar, Mr. Umesh
Mishra & Mr. Vishal Patel,
Advs.
Versus
KYK CORPORATION LTD & ORS ..... Respondents
Through: Mr. Aayushmaan Gauba & Ms.
Gunjan Chhabra, Adv. for R-1.
CORAM:
HON'BLE MR. JUSTICE VIBHU BAKHRU
HON'BLE MR. JUSTICE AMIT MAHAJAN
VIBHU BAKHRU, J. (ORAL)
1. The appellants have filed the present intra-court appeal under
Section 13 of the Commercial Courts Act, 2015 impugning a
judgment dated 06.11.2019 (hereafter the 'impugned judgement')
passed by the learned Single Judge. By the impugned judgment, the
learned Single Judge had dismissed the suit filed by the
appellants/plaintiffs [being CS(COMM) 152/2018] and partly allowed
the Counter Claim (being Counter Claim No.77/2009) instituted by
respondent no.1 (hereafter 'KYK Corporation') and granted the
decree of permanent injunction, as sought for, in terms of the prayer
clause nos. (i) to (iii).
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By:Dushyant Rawal
2. The learned Single Judge had passed the impugned judgment
primarily on the basis of an order dated 10.02.2012, passed by the
Intellectual Property Appellate Board (hereafter 'the IPAB') allowing
KYK Corporation's application for cancelling the registrations of the
trademark "KYK" (hereafter 'the Trademark'), in favour of the
appellants/plaintiffs. The Trademark is a word mark. The impugned
judgment also notes that the appellants had preferred a writ petition
impugning the order dated 10.02.2012, passed by the IPAB.
However, the said petition [being W.P.(C) 2496/2012] was also
dismissed by a judgment dated 03.11.2017.
3. The IPAB had allowed KYK Corporation's application for
rectification of the Register by removal of the registrations of the
Trademark granted in the appellants' favour. However, the appellants
contend that the same did not establish that they had passed off their
goods as that of KYK Corporation. KYK Corporation was required to
establish that it is the prior user of the Trademark in question and
merely because the IPAB had cancelled the registration in favour of
the appellants, it did not entitle KYK Corporation to a decree of
permanent injunction restraining the appellants from passing off or
using the Trademark. The learned counsel for the appellants also
contends that the learned Single Judge had not returned findings on
the issues as framed and the same is contrary to the provisions of
Order XX Rule 5 of the Code of Civil Procedure, 1908 (hereafter 'the
CPC').
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Factual Context
4. The appellants state that they are engaged in the business of
marketing and selling of automobile parts and fittings including
bearings, filters, gear and gear parts, v-belts, fan belts and machinery
parts used in motor land vehicles. Appellant no.1 claims that he
adopted the Trademark in the year 1996 for automobile parts and
fittings. However, the use was extended to cover bearings, filters, gear
and gear parts, v-belts, fan belts and machinery parts used in motor
land vehicles, as well.
5. On 21.08.2000, the appellants applied for the registration of the
Trademark under Class 12 (trademark application no. 949032)
claiming use since 10.10.1996. Thereafter, the appellants filed another
application for registration of the Trademark under Class 7 (trademark
application no. 1291522) on 21.06.2004. The registration certificates
were issued on 03.01.2005 and 19.12.2005 under Classes 12 and 7
respectively.
6. KYK Corporation is a company incorporated under the laws of
Japan and engaged in the business of manufacturing, marketing,
selling and exporting inter alia all types of bearings, including part of
land vehicles, bearing (axle) for vehicle wheels, and bearings
(carrying for wheels) since the year 1952. It claims that the Trademark
is its house mark and forms a prominent part of its corporate name.
KYK Corporation claims that it is a prior user and proprietor of the
Trademark internationally in more than fifty countries.
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7. The appellants claim that in the month of October, 2008, they
discovered that KYK Corporation had adopted the Trademark under
Classes 7 and 12 and was carrying on trade and business bearing the
Trademark.
8. Thereafter, on 22.04.2009, the appellants filed a suit before this
Court [being CS (OS) 1305/2009 subsequently re-numbered as
CS(COMM) 152/2018], inter alia, seeking a decree of permanent
injunction restraining infringement, passing off, rendition of account,
against KYK Corporation. By an order dated 22.07.2009, the learned
Single Judge restrained KYK Corporation from using the Trademark
and trade name "KYK Corporation Ltd." or any other identical or
deceptively similar trademarks.
9. On 10.09.2009, KYK Corporation filed a written statement and
a counter-claim. Additionally, KYK Corporation also filed an
application under Order XXXIX Rules 1 and 2 of the CPC, seeking an
ad-interim injunction.
10. Thereafter, by an order dated 01.07.2010, the learned Single
Judge modified the order dated 22.07.2009, whereby the appellants
were allowed to use the trademark "KYK (India)" and KYK
Corporation was allowed to use the trademark "KYK (Japan)" until
the suit was disposed. Additionally, the appellants and KYK
Corporation were directed to include 'India' and 'Japan' in their trade
names respectively.
11. On 25.03.2011, the Court framed the following issues:
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"(1) Who amongst the parties is the true owner and
lawful proprietor of the trademark KYK for goods
stated in the respective plaints? OPP
(2) Whether the adoption of trademark KYK and its
artistic representation by the plaintiffs is honest, as
alleged? OPP
(3) Who amongst the parties is the prior user of the
trademark /trade name KYK for goods, as stated in the
respective plaints? OPP
(4) Whether the plaintiffs have infringed the copyright
of the defendant no.1/counter claimant in the said
artistic representation of KYK? OPD
(5) Whether the defendants/counter claimant are liable
for infringement of trademark KYK, as stated in the
plaint? OPP
(6) Who amongst the parties is liable for passing off
its goods as the goods of the other by using
trademark/trade name KYK? OPP
(7) Whether the suit of the plaintiff is liable to be
dismissed on account of delay, latches and
acquiescence? OPD
(8) Whether plaintiff is entitled for permanent and
mandatory injunction against the defendant as prayed
for in the prayer clause? OPP
(9) Whether the plaintiff is entitled to the relief of
damages, rendition of accounts of profits and delivery
up against the defendant as prayed for? OPP
(10) Relief."
12. On 10.02.2012, the IPAB allowed KYK Corporation's
application for revocation of the registrations of the Trademark in
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favour of the appellants. The IPAB held that the appellants have not
provided sufficient evidence for proving use of the Trademark prior to
2005.
13. The appellants filed a writ petition [being WP(C) 2496/2012] in
this Court, impugning the order dated 10.02.2012, passed by the
IPAB. By an order dated 03.11.2017, this Court rejected the Writ
Petition as it found no fault with the finding of the IPAB that there
was no evidence of the appellants' use of the Trademark, prior to
2005.
14. On 28.07.2017, KYK Corporation filed two applications; one
under Order VIII Rule 1A of the CPC and the other under Order
XVIII Rule 17 of the CPC. The learned Single Judge dismissed both
the aforementioned applications on 12.10.2017.
15. KYK Corporation filed an appeal against the order dated
12.10.2017. On 29.11.2017, the Division Bench of this Court allowed
KYK Corporation's appeal and permitted leading of evidence in the
matter. A Court Commissioner was appointed for recording of
evidence and the parties were directed to appear before the Court
Commissioner on 16.12.2017 for proceedings in this regard.
16. The evidence was recorded during the period 22.01.2018 to
02.08.2018. Thereafter, the Court Commissioner placed the matter
before the learned Single Judge for further directions. The learned
Single Judge, heard oral submissions on 06.11.2019 and disposed of
the suit/counter claim.
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17. The learned Single Judge dismissed the commercial suit filed by
the appellants and allowed KYK Corporation's counter-claim for
perpetual injunction, restraining the appellants and their affiliates from
manufacturing, getting manufactured, marketing, selling, offering for
sale, stocking, advertising, exhibiting or otherwise dealing in bearings,
parts of land vehicles or any other cognate or allied goods under the
Trademark "KYK" or any other deceptively similar trademark.
Furthermore, the appellants were restrained from passing-off their
goods (bearing, parts of land vehicles and/or any other cognate and
allied goods) and from infringing the copyrights of KYK Corporation
in the carton/packaging of its products, by using an
identical/deceptively similar product packaging with get-up, features
and writing style similar to that as used by KYK Corporation or any
other colourable imitation thereof.
The Impugned Judgment
18. The learned Single Judge examined the order dated 10.02.2012
passed by the IPAB and noted the findings recorded in the said order.
The IPAB had, inter alia, held that the appellants had failed to
establish the use of the Trademark since the year 1996 and 2000 as
claimed by them in respect of goods falling under Classes 12 and 7
respectively. The IPAB also found that certain invoices relied upon
by the appellants did not establish use of the Trademark as claimed
because the said invoices were issued by another entity and not the
entity through which the appellants were claiming rights in respect of
the Trademark.
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19. The learned Single Judge held that the findings were conclusive
inter parties and, therefore, the appellants were precluded from
claiming to the contrary. The learned Single Judge held that in view
of the findings of the IPAB that the appellants had failed to establish
any use prior to the year 2005, they could not succeed in their claim
for infringement or passing off against KYK Corporation. The Court
also independently examined whether the evidence led by the
appellants established use of the Trademark since the year 1996 and
found in the negative. The learned Single Judge also noted the finding
of the IPAB that KYK Corporation had established trans-border
reputation and observed that the same was upheld by this Court by an
order dated 03.11.2017, passed in WP(C) 2496 of 2012.
20. The learned Single Judge concluded that in view of the findings
of the IPAB, the appellants were not entitled to any relief as claimed
in the suit. Axiomatically, the counter claim preferred by KYK
Corporation was liable to succeed insofar as the relief of injunction is
concerned. The other reliefs claimed by KYK Corporation were
rejected.
Reasons and Conclusion
21. The controversy in the present case is narrow. The registration
of the Trademark in favour of the appellants was cancelled in terms of
the order dated 10.02.2012, passed by the IPAB. The only question is
whether the findings of the IPAB, as upheld by this Court, are
sufficient to grant a decree of permanent injunction, as sought for, in
favour of KYK Corporation. A plain reading of the order dated
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10.02.2012, passed by the IPAB, indicates that the IPAB had
examined the material placed by the appellants in support of their
claim of use of the Trademark under Classes 7 and 12 from the year
1996 and 2000 respectively. The IPAB found that the appellants had
failed to establish the same. The operative part of the IPAB's order
reads as under:
"27. The other issue is regarding the user claimed by
the respondents in their application for registration. The
respondents claim user since 1996 and 2000 in their
application. There is no evidence prior to 2005. It is
also the case of the respondent that the manufacturing
of bearings were carried out through one M/s. Techno
Mark Grindwell Industries. The 1st invoice is dated
2005 by M/s. Techno Mark Grindwell Industries. The
respondents have not proved their user as claimed.
28. The respondents have claimed user since
10.10.1996 for Class 12 goods and 10.04.2000 for
Class 7 goods. The respondent's contention is that they
had been dealing through one M/s. Techno Mark
Grindwell Industries. It is not clear as to how long they
were carrying on business through M/s. Techno Mark
Grindwell Industries. As stated earlier 1st invoice is of
the year 2005. In the absence of any documents either
from 1996 or at least from 2000 the claim of user
before the Registrar is wrong statement for which
reason the mark cannot be allowed to continue on the
Register."
22. Before the IPAB, the appellants had relied upon a document
showing use of the Trademark by one M/s V.K. Automobiles.
However, they had failed to establish that M/s V.K. Automobiles was
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a proprietor of the Trademark at any stage. The contention that M/s
V.K. Automobiles was the assignee of the Trademark was also
disbelieved by the IPAB. The IPAB's judgment also contains
observations regarding trans-border reputation of KYK Corporation's
mark.
23. The writ petition preferred by the appellant [being
W.P.(C)2496/2012 captioned Vivek Kochher and Anr. v. M/s. KYK
Corporation Ltd. and Anr.] was rejected by a learned Single Judge of
this Court as the Court found no infirmity with the findings of the
IPAB that the appellants had failed to establish the use of the
Trademark, as claimed in their application. Thus, the decision of
IPAB to rectify the trademarks register and cancel the registration of
the Trademark in favour of the appellants, was upheld. During the
course of the said proceedings, the appellants had contended that KYK
Corporation had failed to establish a trans-border reputation. Prima
facie, the Court found the said contention to be unpersuasive but
declined to examine the question in any detail. This was because the
IPAB's order, which was impugned in the said petition, rested on the
finding that the appellants had failed to establish the facts on the basis
of which the registration of the Trademark was granted in their favour.
Thus, the IPAB's order for rectification of the Trademark could not be
faulted. The relevant extract from the judgment dated 03.11.2017
passed by the Court in W.P.(C)2496/2012 is reproduced below:
"20. The contention that KYK Corp has been unable to
establish a trans-border reputation is also unpersuasive.
KYK Corp had produced evidence to show that its
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goods were being sold in India. It had also produced
material to show that it was exporting goods to United
States to show that it was using the mark in USA since
1953. However, it is not necessary to examine this
issue as the conclusion of IPAB that the petitioners
were unable to establish the use of the mark as claimed
in their application, warranting a rectification of the
registered trademark cannot be faulted."
24. The suit filed by the appellants was premised on the basis that
they were registered proprietors of the Trademark under Classes 7 and
12. In view of the IPAB rectifying the Register and cancelling the
registration in their favour, the fundamental premise on which the
appellant's suit was founded ceased to hold good. The appellants
were no longer registered proprietors of the Trademark, as claimed by
them. Further, they also failed to establish that they were prior users of
the Trademark. Thus, the impugned judgement dismissing the
appellants' suit for infringement of the Trademark cannot be faulted.
25. In so far as KYK Corporation's counter-claim is concerned, this
Court finds it difficult to accept that axiomatically, KYK
Corporation's counter-claim was required to be allowed.
26. KYK Corporation's counter-claim was premised, essentially, on
five assertions. First, that it was a prior adopter, true owner, lawful
proprietor and prior user of the Trademark in relation to the goods in
question. Second, that it was also the owner of the copyright in the
carton tilted "KYK" and the get-up, writing style and related trade
dress. Third, that the appellants had adopted the Trademark, which is
identical to KYK Corporation's well-known trademark. Fourth, that
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the purchasers of the goods such as bearings and parts of the vehicles
are in a class of unwary purchasers, who recognise the goods of KYK
Corporation by its trademark, KYK, and are likely to be confused by
the deceptive similarity with the Trademark used by the appellants.
And fifth, that the use of the Trademark by the appellants for spurious
and inferior quality of goods had tarnished and blurred the reputation
of KYK Corporation's trademark.
27. On the basis of the averments to the aforesaid effect as made in
the counter-claim, KYK Corporation had sought a decree of perpetual
injunction restraining the appellants from, inter alia, dealing with or
manufacturing of bearings or part of the land vehicles or any of the
allied goods under the Trademark/tradename "KYK" or any other
deceptively similar trademark. It had sought a decree of permanent
injunction restraining the appellants from passing off their goods by
using the Trademark/tradename "KYK"; and restraining the appellants
from infringing the copyright in respect of the said trademark.
28. The relief of perpetual injunction for infringement of the
Trademark; passing off; and infringement of copyright has been
decreed in favour of KYK Corporation and against the appellant.
Indisputably, the claims made by KYK Corporation were required to
be established independently. The IPAB's finding that the appellants
had failed to establish the user of the marks "KYK" in Classes 7 and
12 from the years 1996 and 2000 - which was sufficient to allow
KYK Corporation's application for rectification of the Register - is
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insufficient for allowing KYK Corporation's claim for passing off or
for infringement of the Trademark.
29. It is material to note that KYK Corporation is not a registered
proprietor of the Trademark in India. It has applied for registration of
the said mark; however, the said application has not been allowed as
yet. Thus, KYK Corporation had to establish that it was a prior user of
the Trademark and the appellants were passing off their goods.
30. On a pointed query of this Court, the learned counsel appearing
for KYK Corporation fairly conceded that the learned Single Judge
has not examined KYK Corporation's claim for passing off or
returned any finding in respect of the issue of passing off.
31. In view of the above, the impugned judgment, to the extent that
it allows reliefs of perpetual injunction as claimed by KYK
Corporation in prayer clause nos. (i) to (iii) of the counter-claim,
cannot be sustained.
32. The contention that in terms of Order XX Rule 5 of the CPC,
the court is required to state its findings on each of the issues as
framed, is merited. However, Order XX Rule 5 of the CPC also
makes it clear that it is not necessary for the court to state its findings
on each of the issues if the finding upon any one or more of the issues
is sufficient for the decision of the suit.
33. In the present case, the Court had found that the findings of the
IPAB in its order dated 10.02.2012 were dispositive of the controversy
in the suit and the counter-claim. Thus, it was not necessary for the
learned Single Judge to record a separate finding in respect of each of
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the issues. However, as observed above, the findings of the IPAB are
not dispositive of the claim for perpetual injunction as sought by KYK
Corporation by way of the counter-claim and thus, this Court
considers it apposite to remand the matter to the learned Single Judge
for consideration of the said reliefs, afresh.
34. In view of the above, the decrees of perpetual injunction granted
against the appellants are set aside. The matter is remanded to the
learned Single Judge to consider KYK Corporation's claim for passing
off and prayers for perpetual injunction on the basis of the evidence
available on record.
35. The appeal is disposed of in the aforesaid terms. The pending
application is also disposed of.
VIBHU BAKHRU, J
AMIT MAHAJAN, J
SEPTEMBER 23, 2022
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Signature Not Verified
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By:Dushyant Rawal
