Delhi High Court
Sona Blw Precision Forgings ... vs Sona Mandhira Pvt. Ltd. & Ors. on 22 February, 2023
Neutral Citation Number: 2023/DHC/001223
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 21.11.2022
Date of decision:22.02.2023
+ CS(COMM) 277/2020
SONA BLW PRECISION FORGINGS LIMITED & ANR.
..... Plaintiffs
Through: Mr.Akhil Sibal, Sr. Adv. with
Ms.Meghna Mishra, Mr.Ankit
Rajgarhia, Mr.Tarun Sharma,
Ms.Sanya Kumar, Mr.Meenon
Maqbool, Mr.Karanveer
Kathuria, Advs. for P-1.
Mr.Rajshekhar Rao, Sr. Adv.
with Ms.Meghna Mishra,
Mr.Ankit Rajgarhia, Mr.Tarun
Sharma, Ms.Sanya Kumar,
Mr.Meenon Maqbool,
Mr.Karanveer Kathuria, Advs.
for P-2.
versus
SONA MANDHIRA PVT. LTD. & ORS. ..... Defendants
Through: Mr.Rajiv Nayar & Mr.Dayan
Krishnan, Sr. Advs. with
Mr.Rishi Agrawala, Ms.Niyati
Kohli, Mr.Pratham Vir Agarwal
& Ms.Manavi Agarwal, Advs.
for D-1 & D-2.
Mr.Nikhil Rohatgi &
Mr.Shashank Khurana, Advs. in
LA. 12853/2021.
Mr.Arun Sharma, Adv. for D-4.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
Signature Not Verified
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Signing Date:23.02.2023
15:37:05 CS(COMM) 277/2020 Page 1 of 39
Neutral Citation Number: 2023/DHC/001223
I.A. 6131/2020, 7196/2020 & 13971/2021
1. By way of the present order, I will be disposing of the
application filed by the plaintiffs under Order XXXIX Rules 1 and 2
read with Section 151 of the Code of Civil Procedure, 1908 (in short,
„CPC‟), being I.A. 6131/2020, seeking an ad-interim injunction; the
application filed by the defendants under Order VII Rule 11 read with
Section 151 of the CPC, being I.A. 7196/2020, seeking rejection of
Plaint; and the application filed by the defendant no. 2 under Section
151 of the CPC, being I.A. 13971/2021, seeking dismissal of the Suit.
PLAINTIFFS CASE:
2. It is the case of the plaintiff no. 1 that it is a part of the „SONA
Group‟ which was founded in the year 1984. In the year 2008, the
„SONA Group‟ acquired „ThyssenKrupp AG‟s Forgings Business‟ and
became a prominent manufacturer of precision-forged gears in the
world. The plaintiff no.1-Company was renamed as „Sona BLW
Precision Forgings Ltd‟ in the year 2013. In the year 2019, the
plaintiff no.1 acquired „Comstar Automotive Technologies Private
Limited‟, a leading company engaged in the business of designing and
manufacturing of starting, charging systems and HEV/EV Motors and
controllers for global passenger cars, light commercial applications,
and two-wheeler/three-wheeler markets.
3. The plaintiffs assert that the plaintiff no. 1 is a leader in
production of precision forged gears and differential assemblies and
other applications for the automotive industry, and has a major
presence not only in the Indian market but also globally including in
Europe, Canada, the USA, Hong Kong and China. The plaintiff no. 1
has been using 'SONA' formative marks for manufacturing as also
sale in drive-line and electrical divisions.
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Neutral Citation Number: 2023/DHC/001223
4. The plaintiff asserts that there are other entities which are a part
of the „SONA Group‟ having the word 'SONA' in their name, such as
Sona Autocamp Holding Private Limited and Sona Skill Development
Centre Limited.
5. The plaintiff no.1 gives its sales figures in paragraph 9 of the
Plaint, stating that the same have grown from Rs. 145,82,26,876/- in
2007-08 to Rs. 539,67,93,795/- in 2019-2020. The plaintiff no. 1
further states that it has expended large amounts of money on
advertising and sales promotion of their goods bearing the mark
„SONA'; the details whereof for the Financial Years between 2007-08
and 2019-20 are given in paragraph 10 of the Plaint.
6. The plaintiff no.1 asserts that it has also been the recipient of
various awards, the details whereof are given in paragraph 8 of the
Plaint.
7. The plaintiff no.1 asserts that it is the owner and the assignee
(pending registration) of the trade mark/trade name „SONA‟. The
trade mark „SONA‟ was initially owned by the plaintiff no. 2, and the
same was assigned and transferred to the plaintiff no.1 vide
agreement dated 28.03.2019 for a consideration of Rs. 65,00,00,000/-
(Rupees Sixty-Five Crores only). It is asserted that the word „SONA‟
has been used as a part of the plaintiff no.1‟s corporate name, group
name and as a trade mark, since the year 1984 through its
predecessors.
8. The plaintiffs, in the original Plaint, gave details of the
registrations of their trademarks, as under:-
Reg. No. Date of Class Trademark Applicant
Filing
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Neutral Citation Number: 2023/DHC/001223
1707890 08.07.2008 35 Sona
Date of Management
Use: Services
20.10.1993 Limited
List of pending Applications
Appl. Date of Class Trademark Applicant
No. Filing
3816156 25.04.2018 12 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816157 25.04.2018 12 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816158 25.04.2018 12 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816159 25.04.2018 12 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816160 25.04.2018 12 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816161 25.04.2018 12 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816165 25.04.2018 35 Sona
Date of Management
Use: Services
15.03.2018 Limited
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Neutral Citation Number: 2023/DHC/001223
3816166 25.04.2018 35 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816167 25.04.2018 35 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816168 25.04.2018 35 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816169 25.04.2018 35 Sona
Date of Management
Use: Services
15.03.2018 Limited
3816170 25.04.2018 35 Sona
Date of Management
Use: Services
15.03.2018 Limited
4367042 04.12.2019 07 Sona BLW
Date of Precision
Use: Forgings
09.10.2019 Limited
4367043 04.12.2019 12 Sona BLW
Date of Precision
Use: Forgings
09.10.2019 Limited
4367044 04.12.2019 07 SONA Sona BLW
Date of COMSTAR Precision
Use: Forgings
09.10.2019 Limited
4367045 04.12.2019 12 SONA Sona BLW
Date of COMSTAR Precision
Use: Forgings
09.10.2019 Limited
9. It is pertinent to mention here that the plaintiffs, by way of an
amendment to their Plaint, which was allowed by this Court vide its
order dated 08.12.2020, have further pleaded that by way of an
Assignment Deed dated 28.03.2019, executed between the plaintiff
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no. 1, Sona Autocomp Holding Private Limited, Sona BLW
Präzisionsschmiede GMBH and Mr. Sunjay Kapur, the plaintiff no. 1
has been assigned various trademark rights owned by Sona BLW
Präzisionsschmiede GMBH, a German based Company, including the
rights in the word mark "SONA BLW", duly registered in India on
18.07.2014 under Class 12 vide Certificate No. 1178789.
10. The plaintiffs assert that „SONA' is a prominent feature of all
plaintiff no. 1‟s trademarks.
11. It is the case of the plaintiffs that the plaintiff no.1 only just
before the filing of the Suit discovered that the defendants have
adopted the corporate name and trade mark „SONA‟ as part of its own
corporate name/ trade name. It is further asserted that the defendant
no.1 was doing business since the year 2011 under the name „Mandira
Marketing Private Limited‟ and changed it to „Sona Mandhira Pvt.
Ltd.‟ only on 22.06.2020. The plaintiffs assert that the defendants are
also engaged in a similar trade as that of the plaintiff no.1, which
leaves little doubt that the defendants were infact aware of the plaintiff
no.1‟s registration as well as the long and uninterrupted use of the
trade mark/corporate name „SONA‟, and have deliberately and
dishonestly adopted the mark „SONA' as part of its corporate name,
so as to pass off its goods as that of the plaintiff no.1.
12. The plaintiffs state that though the defendant no.2 is the
biological sister of the Chairman of the plaintiff no.1-Company and
the Director of the plaintiff no.2-Company, the same would give no
right to the defendant no. 1 to change its Corporate Name so as to
adopt the mark „SONA'.
CASE OF THE DEFENDANTS
13. On the other hand, it is the case of the defendant nos.1, 2 and 4
that the plaintiffs cannot claim any exclusive right to the use of the
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mark "SONA", the same having been disclaimed by them while
seeking registration of their mark. They further submit that there is no
visual similarity between the marks used by the plaintiffs and those
used by the defendants. The markets and the products in which the
parties deal in are also distinct and different. The customers of the
products are also different, and there is no possibility of any confusion
being caused. The defendants submit that there is, therefore, no case
of infringement or of passing off made out by the plaintiffs against the
defendants.
14. The defendants further submit that the word "SONA" is a
generic and common word in trade and has attained the status of
publici juris. It is not an invented word, but a generic word. They
submit that various Companies have been registered in the Office of
the Registrar of Companies using the word "SONA" as part of their
corporate name. They submit that no person can claim exclusive
proprietary rights over the word "SONA".
15. The specific case of the defendants is that the present suit is
primarily a family dispute between the Chairman of the plaintiff no.1
and the defendant no.2, them being brother-sister. It is submitted that
Mr.Surinder Kapur, the father of the Chairman of the plaintiff no.2,
was also the Director of the defendant no.1-company in the year 2011.
He had not only allowed the defendants to use the word „SONA‟ but,
in fact, urged the defendants to use the said mark.
16. It is further contended by the defendant that the present Suit is
liable to be dismissed on account of delay and laches as also
acquiescence of the plaintiffs in the use of the mark „SONA‟ by the
defendants. It is contended that the defendant no. 1 for the last ten
years not only traded in the products of the plaintiffs, but also carried
out job works for the plaintiffs. 45% of the sales turnover of the
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defendant no.1 is through manufacturing, wherein the defendant no.1
was independently using the „SONA' logo for its packaging. The
goods purchased from the plaintiffs were also packaged by the
defendants and were sold using the impugned mark.
17. The defendants further claim that the present suit is liable to be
dismissed on account of concealment and misstatement.
SUBMISSIONS OF THE LEARNED SENIOR COUNSEL FOR
THE PLAINTIFFS
18. The learned senior counsel for the plaintiffs submits that the
plaintiff no.1 is the registered user/owner of various trademarks of
which the word „SONA‟ forms a dominant part and, hence, is entitled
to protection of the same as a trade mark. He submits that the plaintiff
no.1 has been using the mark „SONA‟ as part of its corporate name
from as early as the year 1984 with the launch of „SONA Group‟, and
not only the plaintiff no.1-company, but also all the subsidiaries of the
plaintiff no. 1 have always carried the name „SONA‟ as part of their
corporate name. He submits that, therefore, the use of the trade mark
„SONA‟ by the defendant no.1, even as its corporate name, results in
infringement of the registered mark of the plaintiff no.1. He places
reliance on Section 29(5) of the Act.
19. He further submits that the mala fide adoption of the word
'SONA' by the defendants as part of their corporate name amounts to
the tortious wrong of passing off, as also unfair competition. He
submits that the defendant no. 1 is not a part of the „SONA‟ group and
it is not explained as to why it chose to change its corporate name long
after its incorporation and that too in the peak of Covid-19 lockdown.
He submits that this itself shows the mala fides of the defendants.
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20. He further submits that the assertion of the defendants that the
corporate name has been changed with the knowledge and consent of
Mrs. Rani Kapur, who is the Managing Director of the plaintiff no. 2,
cannot also act as a shield to the unauthorised adoption of the
impugned mark by the defendants, inasmuch as Mrs. Rani Kapur had
no authority or legal right to permit the defendants to use and/or adopt
the plaintiffs‟ trade mark as all rights of the plaintiff no. 2 with respect
to the trade marks already stood assigned to the plaintiff no. 1 vide
Assignment Deed dated 28.03.2019, executed inter alia under the
signatures of Mrs. Rani Kapur.
21. The learned senior counsel for the plaintiffs further submits that
the assertion of the defendants that various other companies are also
registered with the word „SONA‟, is of no consequence, as the mere
registration of a company name by a third party in the absence of
evidence of substantial use in respect of the relevant class of products
prior in point of time to the adoption and use by the plaintiffs and their
predecessors, cannot defeat the claim of the plaintiffs to the mark
„SONA‟. In this regard he places reliance on Century Traders v.
Roshan Lal Duggar & Co., ILR (1977) II Delhi 709; Pankaj Goel v.
M/s. Dabur India Ltd., 2008 SCC OnLine Del 1744; Walter Bushnell
Pvt. Ltd. v. Miracle Life Sciences, (2014) 213 DLT 119; H&M
Hennes & Mauritz AB and Anr. v. HM Megabrands Pvt. Ltd. and
Ors., 2018 SCC OnLine Del 9369.
22. The learned senior counsel for the plaintiffs further asserts that
the plea of the defendants that they are dealing in different products
and the channel of trade is different, is also ill-founded inasmuch as
the plaintiffs sell their automobile parts to companies like Maruti,
Mahindra & Mahindra, Tata etc. These are the same companies in
respect of whose vehicles the defendant no.1 sells spare parts. The
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defendants have further admitted that they have sold plaintiffs‟
products in the aftermarket, though in a minuscule quantity. As such,
both the plaintiffs and the defendants are trading in automobile parts,
which are same/allied and cognate. In this regard he places reliance on
the judgment in CS (COMM) 383/2022 titled Sona BLW Precision
Forgings Ltd. v. Sonae EV Private Limited.
23. The learned senior counsel for the plaintiffs submits that earlier
the defendants were using the word „SONA' in terms of the Sales
Agreement. The use of the trademark, therefore, cannot lead to any
independent right enuring to the benefit of the defendants. The said
use and any goodwill generated thereby would enure to the benefit of
the plaintiffs alone. In support he places reliance on the Eaton
Corporation & Anr. v. BCH Electric Limited, 2013 SCC OnLine Del
2333. He submits that being an earlier sales agent of the plaintiff
group of companies, the likelihood of deception being caused due to
change of corporate name by the defendant no. 1 is even higher.
24. He submits that the plaintiffs cannot also be accused of having
acquiesced to the use of the mark by the defendants. For acquiescence,
there has to be a positive act by the plaintiffs‟ tantamounting to the
grant of a license in favour of the defendants to use the mark
independently, which is clearly missing in the present case. In support
he places reliance on Make My Trip (India) Private Limited v. Make
My Travel (India) Private Limited, (2019) 80 PTC 491; Emcure
Pharmaceuticals Ltd. v. Corona Remedies Pvt. Ltd., 2014 SCC
OnLine Bom 1064 and Medley Pharmaceuticals Ltd. v. Twilight
Mercantiles Ltd. And Anr., 2014 SCC Online Bom 697.
25. As far as the submission of the learned senior counsel for the
defendants that the present suit and the application deserves to be
dismissed on the ground of suppression and misstatement, the learned
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senior counsel for the plaintiffs submits that the suit was filed in the
middle of Covid-19 pandemic and the Registration Certificate which
disclosed the disclaimer was part of the documents filed with the suit.
The failure to mention the disclaimer in the main body of the plaint
was an oversight. This was even submitted as such in the order dated
28.07.2020 of this Court. In any case, no interim order was passed in
the matter and no benefit was, therefore, derived by the plaintiffs by
this mistake. He submits that the oversight of the plaintiffs is further
borne by the failure of the plaintiffs to plead and annex the
Registration Certificate for the word mark "SONA BLW", the
registration of which has been granted without any disclaimer. It is
only by way of an amendment that the said registration was pleaded
by the plaintiffs.
26. He submits that even otherwise, the disclaimer is immaterial to
the claim of a passing off action and even in respect of an
infringement action, inasmuch as such the disclaimer does not travel
to the market. In support, he places reliance on Charan Dass and
Veer Industries (India) v. Bombay Crockery House, 1984 PTC 102;
Pidilite Industries Ltd. v. S.M. Associates & Ors., (2004) 28 PTC
193 (Bom); and Shree Nath Heritage Liquor Pvt. Ltd. v. Allied
Blender and Distillers Pvt. Ltd., (2015) 221 DLT 359.
27. As far as the submission of the learned senior counsel for the
defendants that even in the amended plaint, the plaintiffs have falsely
depicted their device mark registrations as word mark registrations,
the learned senior counsel for the plaintiffs asserts that this is only a
typographical/clerical error. Paragraph 14 of the original Plaint was
not sought to be amended at all. Therefore, the change in paragraph 14
in the amended Plaint is merely due to inadvertence and not to derive
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any benefit. He submits that this plea is not even taken in the Written
Statement filed by the defendants to the amended plaint.
28. He further submits that the communication with the Trade Mark
Registry at the time of consideration of the application for registration
of the mark of the plaintiffs is also irrelevant. The said correspondence
does not establish that at any point the plaintiffs admitted or accepted
that the word "SONA" is incapable of distinguishing the goods of the
plaintiffs. He submits that, in any case, there can be no estoppel
claimed against the plaintiffs on the basis of the reply filed before the
Trade Mark Registry. In support he places reliance on Telecare
Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. and Ors., 2019
SCC OnLine Del 8739 and H&M Hennes & Mauritz AB and Ors. v.
HM Megabrands Pvt. Ltd. and Ors., 2018 SCC OnLine Del 9369.
SUBMISSIONS OF THE LEARNED SENIOR COUNSELS FOR
THE DEFENDANTS
29. The learned senior counsels for the defendants, while reiterating
the defence set out in the Written Statement, further submit that the
present suit, as also the application seeking interim relief, are liable to
be dismissed on account of suppression of material facts in the Plaint.
They submit that the plaintiffs have intentionally suppressed the
disclaimer on the Registration Certificate which shows that the device
mark registration in favour of the plaintiff no.2 was conditional and
did not allow the plaintiffs to claim any exclusive right in the word
„SONA‟. They submit that the concealment of this material fact itself
is sufficient to disentitle the plaintiffs to any relief. In support they
place reliance on Benara Bearings & Pistons Ltd. v. Mahle Engine
Components India Pvt. Ltd., 2017 SCC OnLine Del 7226; M/s
Seemax Construction (P) Ltd. v. State Bank of India and Another,
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AIR 1992 Del 197; and Bhaskar Laxman Jadhav & Ors. v.
Karamveer Kakasahab Wagh Education Society and Ors., (2013) 11
SCC 531; Columbia Sportswear Company v. Harish Footwear &
Another, 2017 SCC OnLine Del 8122 S.K. Sachdeva vs. Shri
Educare Limited, 2016 (65) PTC 614 (Del); Ram Krishan and Sons
Charitable Trust vs. IILM Business School, 2009 (39) PTC 16 (DB);
Bhaskar Laxman Jadhav and Others vs. Karamveer Kakashab Wag
Education Society and Others, (2013) 11 SCC 53; and S.P.
Chengalvaraya Naidu (Dead) by LRs v. Jagannath (Dead) by LRs &
Ors., (1994) 1 SCC 1.
30. They submit that the purpose of a disclaimer is to minimise the
possibility of extravagant and unauthorised claims being made on the
basis of the registration of the trade marks. In the present case, the
plaintiffs having obtained the registration with the disclaimer of
having no exclusive right conferred in the word „SONA‟ due to such
registration, cannot now claim exclusivity to the use of the said word.
In support they place reliance on Registrar of Trade Marks v. Ashok
Chand Rakhit Ltd., AIR 1955 SC 558; Rajesh Jain v. Amit Jain &
Anr., 2014 SCC OnLine Del 1984; and Shambhu Nath & Brothers &
Ors. v. Imran Khan, 2018 SCC OnLine Cal 7145.
31. The learned senior counsels for the defendants have further,
placing reliance on the correspondence exchanged between the
plaintiffs and the Trade Mark Registry, submitted that the plaintiff
no.2, while seeking registration of its device mark had stated that
"Driving Tomorrow" with "S" symbol (curved road) are the
differentiating features. Therefore, no exclusive right over the word
„SONA‟ was claimed by the plaintiffs. They submit that this
correspondence has been intentionally concealed from this Court,
thereby disentitling the plaintiffs to any relief.
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32. The learned senior counsels for the defendants have further
asserted that the change in the corporate name by the defendant no.1
was done with the consent of Mrs.Rani Kapur, the original owner and
Managing Director of the plaintiff no.2. They submit that a notice
dated 22.05.2020 was sent to all the shareholders of the defendant
no.1 proposing to call an Extraordinary General Meeting for according
consent to the change of the name of the defendant no.1. On
04.06.2020, Mrs.Rani Kapur consented to convening the meeting at a
shorter notice. The meeting was accordingly held on 06.06.2020, in
which Mrs.Rani Kapur was also present, and the proposal to change
the name of defendant no.1 was approved. They submit that these
documents have also been intentionally withheld by the plaintiffs from
this Court, thereby making the „Statement of Truth‟ filed with the
Plaint as false.
33. The learned senior counsels for the defendants, placing reliance
on the judgments of this Court in Vardhaman Buildtech Pvt. Ltd. v.
Vardhman Properties Ltd., 2016 SCC OnLine Del 4738; and Rich
Products Corporation & Anr. v. Indo Nippon Food Ltd., ILR (2010)
II Delhi 663, submit that the plaintiffs having obtained registration in
the device marks, cannot claim any exclusive right over the word
„SONA‟.
34. They further submit that reliance on the registration of the
word mark "SONA BLW" by the plaintiffs cannot also be accepted,
inasmuch as the registration of the same has not been transferred in
the favour of the plaintiff no. 1 as yet.
35. They submit that as far as the mark „SONA DRIVING
TOMORROW‟ is concerned, the claim of the plaintiffs is also hit by
acquiescence inasmuch as the defendant no.1 was using the said
mark/logo on its products when the plaintiffs and the defendants were
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working together. After 2021, the defendants have not used the said
logo.
36. As far as the claim of passing off is concerned, the learned
senior counsels for the defendants submit that no case of passing off is
made out inasmuch as the products of the plaintiffs and the defendants
cater to different segments of the market; and the purchaser of the
goods and the entire supply chain is different. While the plaintiff no.1
supplies only to Original Equipment Manufacturers to those who work
under bulk long term contracts, the defendant no.1 has its market post
the sale of a vehicle. The device/logo of the plaintiffs and the
defendants is also different. They submit that there is no visual
similarity between the marks. The trade dress of the two marks, the
colour combination, and the tag lines are also not the same. The same
are reproduced herein below:
37. In support of the above submission, they place reliance on the
following judgments:-
1. Cadbury UK v. Lotte India, (2014) 207 DLT 500;
2. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.,
(2001) 5 SCC 73;
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3. Khoday Distilleries v. Scotch Whiskey Association,
(2008) 10 SCC 723;
4. Kaviraj Pandit Durga Dutt Sharma v. Novaratna
Pharmaceutical Laboratories, AIR 1965 SC 980;
5. Intex Technologies India Ltd. v. M/s AZ Tech India
Limited and Anr., FAO(OS) No. 1/2017 decided on
10.03.2017; and
6. Thukral Mechanical Works v. P.M. Diesel Private
Limited & Anr., (2009) 2 SCC 768.
ANALYSIS AND FINDINGS
38. I have considered the submissions made by the learned senior
counsels for the parties.
Suppression and Misstatements
39. I shall first consider the plea of suppression and misstatement
alleged by the defendants against the plaintiffs.
40. In Columbia Sportswear Company (supra), the learned Single
Judge of this Court held that the conduct of the parties who are
seeking discretionary relief from the Court weighs largely in the mind
of the Court while dealing with a prayer seeking discretionary relief.
Where a party is guilty of suppression of material facts, he may not be
entitled to such a relief. I, in fact, need not multiply decisions on this
well settled proposition of law.
41. As noted hereinabove, the defendants have alleged that the
present suit as also the application seeking interim relief filed by the
plaintiffs deserves to be dismissed on account of the suppression and
intentional mis-representation of the following material facts:
a) Suppression of the disclaimer on the use of the word
"SONA" in the Trade Mark Application No.1707890;
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b) Suppression of proceedings before the Trade Marks
Registry with respect to the above application.
42. As far as the suppression of disclaimer is concerned, I am in
agreement with the submission made by the learned senior counsel for
the defendants that the disclaimer attached to the registration granted
in favour of the plaintiffs under Application No.1707890 was a vital
and material fact to be disclosed upfront by the plaintiffs in the Plaint,
especially where they are claiming exclusive rights in the word
"SONA".
43. The learned senior counsel for the plaintiffs has explained that
the non-disclosure of the disclaimer was unintentional as the present
suit was filed when the Covid-19 pandemic lockdown was at its peak.
He has submitted that the Registration Certificate which disclosed the
disclaimer was part of the documents filed along with the suit and that
the failure to mention the disclaimer in the Plaint was an oversight.
He submits that no interim relief was granted in the suit and, therefore,
the plaintiffs derived no benefit through non-disclosure of the
disclaimer. He submits that, in fact, the plaintiffs also failed to plead
and annex the Registration Certificate for the word mark "SONA
BLW", which would otherwise have been supportive of the plaintiff‟s
case at the time of filing of the suit and which registration is without
any disclaimer.
44. I am not impressed with the above submissions. As noted herein
above, the disclaimer of the exclusive right in the word "SONA" was
a vital fact to be disclosed by the plaintiffs in the Plaint. It may or
may not eventually influence the outcome of the Suit/application
seeking interim injunction one way or the other, however, has to be
disclosed. The Court has to be informed of all relevant facts for it to
take a decision.
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45. The Court is also not expected to scan through voluminous
documents filed by the plaintiffs with the Plaint in order to find for
itself such an important and vital fact. In fact, the plea that the
disclosure could not be made as the Plaint was filed during Covid-19
lockdown, is defeated by the fact that the plaintiffs had this document
in their custody and filed the same with the Plaint, however, did not
mention its effect in the Plaint. The non-disclosure, therefore, has
nothing to do with Covid-19 lockdown. However, to a limited extent
that the suit was filed in urgency and during the Covid-19 pandemic,
the same can act as a mitigating circumstance.
46. Equally, only because the plaintiffs were unable to obtain an ex-
parte ad interim order because of the presence of the defendants, who
pointed out the above concealment on the first date of hearing, cannot
absolve the plaintiffs from the repercussions of such concealment.
Concealment remains unpardonable even where the plaintiff does not
succeed in misleading the Court thereby, or where the defendant
appears and is able to highlight such concealment on the first date of
hearing, thereby preventing an adverse order being passed against it.
However, having suffered the consequence of non-disclosure, the
plaintiff cannot be condemned indefinitely.
47. The fact that the plaintiffs also failed to plead another
registration which may be supportive of its case in the Suit, also
cannot absolve the plaintiffs of their misconduct, but may act as a
mitigating circumstance.
48. Having said the above, however, in my view, the concealment
made by the plaintiffs in every case would not result in an automatic
dismissal of the Plaint and/or of the applications filed by the plaintiffs
seeking interim relief. In law, an injunction against infringement and
passing off is granted not only to protect the proprietary rights of the
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plaintiffs but also to protect an ordinary unwary consumer who may
be deceived due to adoption of a similar mark for similar goods by the
defendant. There is, therefore, an element of public interest also to be
protected. Facts
of each case would, therefore, have to be considered
to determine the effect of concealment/misstatement therein.
49. In the present case, as is being explained hereinbelow, the
change of the corporate name by the defendant no. 1 is bordering on
malafide. There is no reason given by the defendant no. 1 for the
sudden change of its corporate Name so as to adopt the word „SONA‟
therein. This coupled with the fact that earlier the defendant no. 1 was,
in fact, also working for the plaintiffs, which relationship has been
terminated by the plaintiffs, makes such adoption of the mark further
deceptive. Prima facie, therefore, the draw of equity is against the
defendants and in favour of the plaintiffs.
50. In my view, in the facts of the present case, therefore, for the
above acts of concealment, the plaintiffs can be visited with
exemplary costs rather than dismissing its suit and/or application
seeking interim relief on account of their acts of concealment and
misstatement.
51. Before proceeding on merit, and as noted above, the defendants
have also alleged suppression on part of the plaintiffs in not disclosing
the correspondence exchanged between the plaintiffs and the Trade
Marks Registry for its Application No.1707890. In this regard, my
attention has been drawn to the Examination Report dated 24.10.2008
raising objection to the application of the plaintiff no. 2 on the ground
that the mark applied for is devoid of any distinctive character and
because the same/similar marks are already on the Register for the
same or similar goods/services. In response dated 21.11.2008, the
plaintiff no. 2 stated as follows: -
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"...the applied trademark contains distinctive
features such as the text "Driving Tomorrow"
with "S" symbol (curved road) which clearly
differentiates it from other alleged conflicting
trademarks provided in subjected
departmental letter."
52. The learned senior counsels for the defendants submit that the
above response of the plaintiff no. 2 would show that the plaintiff no.
2 was claiming "Driving Tomorrow" and the "S" symbol as the
distinguishing and prominent feature of its mark and not the word
„SONA‟.
53. They further refer to TM-16 filed by the plaintiff no. 2 on
05.11.2009 to submit that the plaintiff no. 2 applied for amending its
application by seeking deletion of "Driving Tomorrow" from its
mark. This application was withdrawn by the plaintiff no. 2 on
09.05.2014. The learned senior counsels for the defendants submit
that, therefore, the plaintiffs cannot also claim any exclusive right to
the use of the words "Driving Tomorrow". They submit that, in any
case, the plaintiffs were under a legal obligation to have disclosed the
above exchange of correspondence with the Trademark Registry and,
having not done so, are not entitled to any discretionary relief.
54. In my opinion, in the facts of the present case, the same
rigors/standard of disclosure as is being applied to the disclaimer of
the word "SONA" for the mark registered in favour of the plaintiffs,
does not apply to the exchange of correspondence between the
plaintiff no. 2 and the Trade Mark Registry before the grant of
registration. As held by this Court in H&M Hennes & Mauritz AB
(supra) and Telecare Network India Pvt. Ltd (supra), the
correspondence exchanged between the trademark applicant and the
Trademark Registry may not be relevant for the purpose of
Signature Not Verified
adjudication of the present application as it may not act as an estoppel
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against the applicant. Though in some cases, such exchange of
correspondence may be very material to the facts of the case and
would need to be disclosed upfront by the parties, in the present case,
nothing much turns on the above correspondence. As noted
hereinabove, the plaintiff proceeded for registration with the
disclaimer of the word "SONA", and at the same time with the words
"Driving Tomorrow" in the mark. In fact, the defendants admit to
having stopped the use of words "Driving Tomorrow" with effect
from 2021. Therefore, what remains to be seen is the effect of the
mark as has been registered with its disclaimer.
55. The learned senior counsels for the defendants have also urged
that the plaintiffs are guilty of misleading this Court by giving
incorrect details of registration of the Trade Marks standing in their
name in the amended Plaint. He submits that an attempt has been
made by the plaintiffs in their amended plaint to show as if the
registrations/applications standing in their name are in the word mark
"SONA", while the registrations/applications are in the device marks.
On the other hand, the learned senior counsel for the plaintiffs, in my
opinion, rightly so, urges that the chart appearing in paragraph 14 of
the amended Plaint is a mere clerical error, wherein, instead of
reproducing the marks as registered/applied for the words of the marks
in question have been reproduced. The learned senior counsel for the
plaintiffs has also submitted that, in fact, in the written statement filed
to the amended Plaint, the defendants did not even point out this
discrepancy in the amended Plaint or sought to take advantage thereof;
the said submission has come about only in the course of oral
arguments.
56. In view of the above, the plea of concealment and misstatement
with respect to the correspondence exchanged by the plaintiffs with
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the Registrar of the Trade Marks and/or in the depiction of the
registered Trade Marks in the amended Plaint, in my opinion, cannot
act as a reason for denying relief to the plaintiffs or for dismissing the
suit.
57. As far as the dispute between the parties on merit is concerned,
the plaintiffs are aggrieved of the change of the corporate name of the
defendant no.1 from "Mandira Marketing Pvt. Ltd" to "Sona
Mandhira Pvt. Ltd" on 22.06.2020. As noted hereinabove, the
plaintiffs claim that not only is the plaintiff no.1 the owner and
assignee (pending registration) of the trade marks and trade names of
which "SONA" forms a predominant part, but also various group
companies of the plaintiffs have been incorporated with the said name.
58. On the other hand, the defendants plead that as the word
"SONA" has been disclaimed in the registration granted in favour of
the plaintiffs under Registration No.1707890, the plaintiffs cannot
claim any exclusivity over the said word. It is further contended that
the registrations being in device marks, even otherwise, no separate
claim can be had to the word „SONA'.
Effect of Disclaimer:
59. In Ashok Chand Rakhit (supra), the Supreme Court explained
the ambit, scope, and purpose of disclaimer while granting registration
of a Trade Mark, in the following words:
"8. The third thing to note is that the avowed
purpose of the section is not to confer any
direct benefit on the rival traders or the
general public but to define the rights of the
proprietor under the registration. The
registration of a trade mark confers
substantial advantages on its proprietor as
will appear from the sections grouped together
Signature Not Verified in Chapter IV under the heading "Effect of
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Registration". It is, however, a notorious fact
that there is a tendency on the part of some
proprietors to get the operation of their trade
marks expanded beyond their legitimate
bounds. An illustration of an attempt of this
kind is to be found in In re Smokeless Powder
Co.'s Trade Mark [LR (1892) 1 Ch 590 : 9
RPC 109] . Temptation has even led some
proprietors to make an exaggerated claim to
the exclusive use of parts or matters contained
in their trade marks in spite of the fact that
they had expressly disclaimed the exclusive
use of those parts or matters. Reference may
be made to Greers Ltd. v. Pearman and
Corder Ltd. [(1922) 39 RPC 406] commonly
called the "Banquet" case. The real purpose
of requiring a disclaimer is to define the rights
of the proprietor under the registration so as
to minimise, even if it cannot wholly eliminate,
the possibility of extravagant and
unauthorised claims being made on the score
of registration of the trade marks.
9. The last feature of the section is its proviso.
That proviso preserves intact any right which
the proprietor may otherwise under any other
law have in relation to the mark or any part
thereof. The disclaimer is only for the
purposes of the Act. It does not affect the
rights of the proprietor except such as arise
out of registration. That is to say, the special
advantages which the Act gives to the
proprietor by reason of the registration of his
trade mark do not extend to the parts or
matters which he disclaims. In short, the
disclaimed parts or matters are not within the
protection of the statute. That circumstance,
however, does not mean that the proprietor's
rights, if any, with respect to those parts or
matters would not be protected otherwise than
under the Act. If the proprietor has acquired
any right by long user of those parts or
matters in connection with goods
manufactured or sold by him or otherwise in
relation to his trade, he may, on proof of the
necessary facts, prevent an infringement of his
rights by a passing off action or a prosecution
under the Indian Penal Code. Disclaimer does
not affect those rights in any way."
(Emphasis supplied)
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60. A reading of the above would show that merely because a mark
has been registered with a disclaimer, the right of a proprietor over the
mark or part thereof, if there was any, is not affected and continues to
exist.
61. In Charan Dass (supra), this Court reiterated that while a
disclaimer means that registration does not confer any right to the
exclusive use of the particular word as the Trade Mark, the Registrant
of a mark may still be entitled to restrain others from using the said
disclaimed word on the principles of passing off. It was held as under:
"that disclaimer does not, in any way, debar
acquiring of a right to exclusive use of a word
in the trade-mark, otherwise then by
registration and defendant can be restrained
from passing off, his goods as that of the
plaintiff......notwithstanding disclaimer or
refusal to register a particular word in a
trade-mark, passing off action can be brought
and a trader can protect his rights by way of
such an action."
62. In Pidilite Industries Ltd (supra), the Court held that in spite of
a disclaimer, an action of infringement may be maintainable. It was
held as under:
"68. On the question of infringement of the
trade mark there remains a further aspect for
consideration viz. the effect of the disclaimer
of the word "Seal". Dr. Shivade contended that
while considering the question of infringement
of trade mark I must ignore the word "Seal"
and then judge whether the first Defendants
mark is deceptively similar to the residual part
of the Plaintiffs mark which would now only
comprise of the letter "M".
69. If the approach adopted by Dr. Shivade is
correct, there is no infringement. I am
however unable to accept this to be the correct
approach while deciding the question of
infringement in respect of the registered mark
with a disclaimer.
70. Dr. Tulzapurkar invited my attention to the
case of GRANADA Trade Mark (1979)13
R.P.C. 303. it was held :
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"I do not think, therefore, that a
disclaimer per se effects the question of
whether or not confusion of the public is
likely when that question is for
determination under section 12(1), a
context other than one that is concerned
solely with the exclusive rights of a
proprietor. As Lloyd-Jacob, J. put it in
Ford-Works Application (1955) 72
R.P.C. 191 lines 30 to 38, a disclaimer
does not affect the significance which a
mark conveys to others when used in the
course of trade. Disclaimers do not go
into the market place, and the public
generally has no notice of them. In my
opinion matter which is disclaimed is
not necessarily disregarded when
question of possible confusion or
deception of the public, as distinct from
the extent of a proprietors exclusive
rights, are to be determined. In making
the comparison under section 12(1)
therefore I consider that I must have
regard to the whole of the opponents
mark, including the disclaimed matter,
and must assume use of it in a normal
and fair manner for, inter alia, the
applicants goods. The applicants are
very well known as manufacturers of
motor cars. The opponents are
registered as merchants of their goods.
Although the opponents are not
manufacturers of motor cars I do not
think that this difference in the parties
activities should lead me to make the
required comparison on any basis other
than that, so far as identical goods are
concerned, the normal and fair manner
of use of the marks would also be
identical."
71. I am in respectful agreement that despite a
disclaimer in respect of the word "Seal" I must
have regard to the whole of the Plaintiffs mark
including the disclaimed matter while deciding
the question of infringement. A contrary view
could lead to peculiar results. Take for
instance where the disclaimed word is written
in a distinctive style with embellishments
within, on or around it, and the Opponents
mark also consists of the disclaimed word
Signature Not Verified written in the same distinctive manner. Were it
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open to the Opponent to contend that the
disclaimed word ought to be ignored there
would be nothing left to compare. Let me carry
this illustration further with the modification
that the embellishments in the two marks are
different. If the disclaimed word is to be
ignored all that would be left is the
embellishments. This is not how a person in
the market would view the marks while
purchasing a product. There would remain an
equal degree of possibility of deception and
confusion as the public, being oblivious to the
disclaimer would not analyze the marks as
suggested by Dr. Shivade. In the
circumstances, the disclaimer in the present
case does not affect the Plaintiffs right to
obtain an injunction for infringement."
63. In Shree Nath Heritage Liquor Pvt. Ltd (supra), this Court re-
emphasized that a disclaimer in a trade mark does not travel to the
market place. Hence, for the purpose of comparison of the two marks,
the disclaimed portion can also be considered and the marks with the
disclaimer can be considered as a whole for infringement.
Mark as a whole:
64. Sections 15 and 17 of the Act read as under:
"Section 15. Registration of parts of trade
marks and of trade marks as a series. -
(1) Where the proprietor of a trade
mark claims to be entitled to the exclusive use
of any part thereof separately, he may apply to
register the whole and the part as separate
trade marks.
(2) Each such separate trade mark shall
satisfy all the conditions applying to and have
all the incidents of, an independent trade
mark.
(3) Where a person claiming to be the
proprietor of several trade marks in respect of
the same or similar goods or services or
description of goods or description of services,
Signature Not Verified which, while resembling each other in the
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material particulars thereof, yet differ in
respect of--
(a) statement of the goods or
services in relation to which they
are respectively used or
proposed to be used; or
(b) statement of number, price,
quality or names of places; or
(c) other matter of a non-distinctive
character which does not
substantially affect the identity of
the trade mark; or
(d) colour,
seeks to register those trade marks, they
may be registered as a series in one
registration.
xxxxx
Section 17. Effect of registration of parts of
a mark.-(1) When a trade mark consists of
several matters, its registration shall confer on
the proprietor exclusive right to the use of the
trade mark taken as a whole.
(2) Notwithstanding anything contained
in sub-section (1), when a trade mark--
(a) contains any part--
(i) which is not the subject of a
separate application by the proprietor
for registration as a trade mark; or
(ii) which is not separately
registered by the proprietor as a trade
mark; or
(b) contains any matter which is
common to the trade or is otherwise of a non-
distinctive character,
the registration thereof shall not confer
any exclusive right in the matter forming only
a part of the whole of the trade mark so
registered."
65. Explaining the above provisions, a Division Bench of this Court
in Vardhman Buildtech Pvt. Ltd. (supra), has held that registration in
a composite mark containing various parts would confer on the
proprietor an exclusive right to use of the trade mark taken as a whole
and not to only a part thereof. However, in my opinion, this would not
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defeat the right of the plaintiff/proprietor to claim injunction on the
basis of passing off. For the test of passing off, the marks are to be
tested on the standard of a person of average intelligence with
imperfect recollection. It is the overall impression of the mark created
on the consumer that would be the governing factor to determine
likelihood of confusion or deception. In such determination, therefore,
the Court may also identify elements or features of the mark that are
more or less important for purpose of making the comparison between
the competing marks.
66. In M/s. South India Beverages Pvt. Ltd., 2014 SCC OnLine
Del 1953, a Division Bench of this Court has held that in a composite
mark, it is not improper to identify elements or features of the mark
that are dominant or significant because they attract attention and
consumers are more likely to remember and rely on them for purposes
of identification of the source. It was held as under: -
"19. Though it bears no reiteration that while
a mark is to be considered in entirety, yet it is
permissible to accord more or less importance
or 'dominance' to a particular portion or
element of a mark in cases of composite
marks. Thus, a particular element of a
composite mark which enjoys greater
prominence vis-à-vis other constituent
elements, may be termed as a 'dominant mark'.
20. At this juncture it would be apposite to
refer to a recent decision of this Court
reported as 211(2014) DLT 296 Stiefel
Laborataries v. Ajanta Pharma Ltd. The Court
whilst expounding upon the principle of 'anti-
dissection' cited with approval the views of the
eminent author on the subject comprised in his
authoritative treatise -McCarthy on
Trademarks and Unfair Competition. It was
observed:
"41. The anti-dissection rule which is
under these circumstances required to be
Signature Not Verified
applied in India is really based upon nature of
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customer. It has been rightly set out in
McCarthy on Trademarks and Unfair
Competition about the said rule particularly in
Para 23.15 which is reproduced hereunder:
23.15 Comparing Marks: Differences v.
Similarities
[1] The Anti-Dissection Rule
[a] Compare composites as a Whole:
Conflicting composite marks are to be
compared by looking at them as a whole,
rather than breaking the marks up into their
component parts for comparison. This is the
"anti dissection" rule. The rationale for the
rule is that the commercial impression of a
composite trademark on an ordinary
prospective buyer is created by the mark as a
whole, not by its component parts. However, it
is not a violation of the anti-dissection rule to
view the component parts of conflicting
composite marks as a preliminary step on the
way to an ultimate determination of probable
customer reaction to the conflicting
composites as a whole. Thus, conflicting marks
must be compared in their entireties. A mark
should not be dissected or split up into its
component parts and each part then compared
with corresponding parts of the conflicting
mark to determine the likelihood of confusion.
It is the impression that the mark as a whole
creates on the average reasonably prudent
buyer and not the parts thereof, that is
important. As the Supreme Court observed:
"The commercial impression of a trademark is
derived from it as a whole, not from its
elements separated and considered in detail.
For this reason it should be considered in its
entirety." The anti- dissection rule is based
upon a common sense observation of customer
behavior: the typical shopper does not retain
all of the individual details of a composite
mark in his or her mind, but retains only an
overall, general impression created by the
composite as a whole. It is the overall
impression created by the mark from the
ordinary shopper‟s cursory observation in the
marketplace that will or will not lead to a
likelihood of confusion, not the impression
created from a meticulous comparison as
expressed in carefully weighed analysis in
legal briefs. In litigation over the alleged
Signature Not Verified similarity of marks, the owner will emphasize
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the similarities and the alleged infringer will
emphasize the differences. The point is that the
two marks should not be examined with a
microscope to find the differences, for this is
not the way the average purchaser views the
marks. To the average buyer, the points of
similarity are more important that minor
points of difference. A court should not engage
in "technical gymnastics" in an attempt to find
some minor differences between conflicting
marks.
However, where there are both
similarities and differences in the marks, there
must be weighed against one another to see
which predominate.
The rationale of the anti-dissection rule
is based upon this assumption: "An average
purchaser does not retain all the details of a
mark, but rather the mental impression of the
mark creates in its totality. It has been held to
be a violation of the anti-dissection rule to
focus upon the "prominent" feature of a mark
and decide likely confusion solely upon that
feature, ignoring all other elements of the
mark. Similarly, it is improper to find that one
portion of a composite mark has no trademark
significance, leading to a direct comparison
between only that which remains."[Emphasis
Supplied]
21. The view of the author makes it
scintillatingly clear, beyond pale of doubt, that
the principle of 'anti dissection' does not
impose an absolute embargo upon the
consideration of the constituent elements of a
composite mark. The said elements may be
viewed as a preliminary step on the way to an
ultimate determination of probable customer
reaction to the conflicting composites as a
whole. Thus, the principle of „anti- dissection‟
and identification of 'dominant mark' are not
antithetical to one another and if viewed in a
holistic perspective, the said principles rather
compliment each other.
xxxxx
23. It is also settled that while a trademark is
supposed to be looked at in entirety, yet the
consideration of a trademark as a whole does
not condone infringement where less than the
entire trademark is appropriated. It is
Signature Not Verified therefore not improper to identify elements or
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features of the marks that are more or less
important for purpose of analysis in cases of
composite marks.
xxxxx
26. Dominant features are significant because
they attract attention and consumers are more
likely to remember and rely on them for
purposes of identification of the product.
Usually, the dominant portion of a mark is that
which has the greater strength or carries more
weight. Descriptive or generic components,
having little or no source identifying
significance, are generally less significant in
the analysis. However, words that are
arbitrary and distinct possess greater strength
and are thus accorded greater protection."
67. In the present case, the plaintiffs have registration in their
favour, of which the word "SONA" is a predominant part. It has
registrations in the word mark "SONA BLW" as well. Applying the
ratio of M/s. South India Beverages Pvt. Ltd (supra), this Court in its
judgment dated 02.08.2022 passed in CS(COMM) 383/2022, titled
Sona BLW Precision Forgings Ltd. v. Sonae EV Private Limited,
has held that "SONA" forms a dominant part of the plaintiffs‟ Trade
Mark, thus is entitled to protection. It is also of import that the word
"SONA" otherwise cannot be said to be descriptive or even suggestive
of the goods in which the plaintiff deals in. Further, the reason given
by the defendants for adoption of the word „SONA' in its corporate
name does not impress me, as has been explained hereinafter.
68. For the above reasons, the submissions of the learned senior
counsel for the defendants based on disclaimer as also registration
being in a device mark, deserve to be rejected.
Third Party use
69. The learned senior counsels for the defendants have also placed
reliance on a table giving the „list of companies using „SONA‟ as per
MCA‟ to contend that there are various other companies also
Signature Not Verified
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incorporated using the word „SONA‟. They submit that, therefore, the
plaintiffs cannot claim any exclusive right over the said word.
70. I am not impressed with the above submission of the learned
senior counsels for the defendants. As held by this Court in Pankaj
Goel (supra), mere presence of a mark on the Register does not signify
its use. In any case, the plaintiff is not expected to sue all small type of
infringers who may not be affecting the plaintiff‟s business. In any
case, such incorporation cannot come to the aid of the defendants
unless the defendants are able to make out a case for use of the said
word/mark in their independent right.
Adoption of mark by the defendants:
71. This would now bring me to the issue of adoption of the mark
"SONA" as part of its corporate name by the defendant no.1. The
learned senior counsel for the defendant no.1 has contended that the
defendant no.1 is a family concern promoted by Late Mr.Surinder
Kapur, the father of the defendant no.2. He submits that the change of
the corporate name of the defendant no.1 to "Sona Mandhira Pvt.
Ltd." was done with the consent of Mrs.Rani Kapur, wife of Late
Mr.Surinder Kapur and the Managing Director of the plaintiff no.2.
He submits that the defendants had even earlier been using the word
"SONA" on its packaging.
72. I am not impressed with the submissions made by the learned
senior counsels for the defendants. As pointed out by the learned
senior counsel for the plaintiffs, the defendant no.1 was incorporated
as "Mandira Marketing Pvt. Ltd." in the year 2011, that is during
the lifetime of Late Mr.Surinder Kapur. Though there are various
other companies of the family group which were incorporated with the
word "SONA" as part of their corporate name, the defendant no. 1 did
not have the word "SONA" as part of its corporate name.
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Signing Date:23.02.2023
Neutral Citation Number: 2023/DHC/001223
73. The learned senior counsel for the plaintiffs has also drawn my
attention to an email dated 17.01.2012 from Late Mr.Surinder Kapur
to Mr.Himanshu Koirala, by which he had suggested the defendant
no.1 to use "SONA" logo for SONA goods and products while
creating its own brand. The same is reproduced herein below:
"You make me feel proud of you and my
prayers will always be for God to keep
you on a good path with good values.
Life can only be beautiful and rich, if
one lives with good values and has a
happy home, full of love and affection.
As Mandira‟s daddy, you have honoured
me by naming your company with
"Mandira". Thank You.
I had not seen your packaging before. I
suggest you use Sona Logo, for Sona
Group products. To create your own
Brand will pay you in the long run.
Himanshu, thank you for your love.
Dad."
(Emphasis supplied)
74. The above email prima facie shows that the defendant no.1 was
not considered as a group company of the plaintiffs but as a separate
entity, which was allowed to use the mark "SONA" for the „SONA
Group‟ products.
75. In this regard, the learned senior counsel for the plaintiffs has
also drawn my attention to the Sale Agreement dated 09.04.2012
executed between Sona Okegawa Precision Forgings Limited and
the defendant no.2, by which the defendant no.2 was appointed as a
selling agent to sell the products with the mark "SONA" in the After
Sales market. These documents prima facie evidence that the claim of
the defendant no. 1 to use the word "SONA" as part of its corporate
name due to the relationship between the defendant no. 2 with the MD
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of the defendant no. 1, prima facie cannot be accepted. In spite of this
relationship, the defendant no. 1 had not claimed any independent
right to use the word "SONA" as part of its corporate name till its
impugned action of changing its corporate name. Even if there was
some use of the trade mark of the plaintiffs for the own goods of the
defendant no. 1, the same shall enure only to the benefit of the
plaintiffs and shall not confer any independent right over the said
mark in the defendants.
76. As far as the claim of permission for the change of the corporate
name from Mrs.Rani Kapur is concerned, the documents relied upon
by the learned senior counsel for the defendants appear to be executed
by Mrs.Rani Kapur as a shareholder of defendant no.1 and in her
individual capacity. The registrations of the trade marks stand in the
name of the plaintiff no.2, which is a corporate entity. They already
stand assigned in favour of the plaintiff no. 1. Mrs.Rani Kapur in her
individual capacity, therefore, cannot claim any right over the said
mark, which can be assigned or licensed by her to a third party in her
individual capacity.
77. That apart, the learned senior counsel for the plaintiffs has also
drawn my attention to the "Brand Ownership Agreement" dated
28.03.2019 whereby inter-alia the plaintiff no.2 assigned all its rights
in the trade marks in favour of the plaintiff no.1. The plaintiff no.1
also claims to have made an application with the Trade Marks
Registry for recording such assignment. Though, the said assignment
has still not been registered by the Trade Marks Registry, in my
opinion, this would not affect the rights of the plaintiff no.1 in such
registrations. As held by this Court in Astrazeneca UK Ltd. & Anr v.
Orchid Ltd. & Pharmaceuticals Ltd., 2006 SCC OnLine Del 1668,
the effect of assignment takes place on execution of such Assignment
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Deed; the assignee thereafter has to apply to the Trade Marks Registry
for recording such assignment, however, even while such application
is pending with the Trade Marks Registry and during the interregnum,
such assignee would be entitled to avail rights as being a registered
proprietor of the marks.
78. It is also to be noted that the plaintiffs had immediately on
coming to know of the change of the corporate name approached this
Court by way of the present suit thereby clearly evidencing their intent
not to allow the defendant no.1 to use the mark "SONA".
Acquiescence
79. The plea of the learned senior counsel for the defendants that
the mark "SONA" was being used by the defendants even earlier to
the change of the corporate name, and, therefore, the plaintiffs have
acquiesced to such use, in my opinion, also deserves to be rejected.
Admittedly, the defendant no.2 was acting as a sales agent for the
products manufactured by the plaintiffs‟ group of companies. There
was an association between the companies, that is, the plaintiffs and
the defendant no.1. In such circumstances, even if the defendant no.1
individually and for its own goods used the mark of the plaintiffs, the
same would only enure to the benefit of the plaintiffs and not the
defendants. This was a case of permissive use rather than a use
wherein the defendant sets up an independent title to the trade mark.
By such usage, the defendant no.2 cannot claim any independent
rights over the said mark.
80. As observed by this Court in Eaton Corporation & Anr.
(supra), an ex-licensee cannot claim ownership of a trademark in his
name either during the licensing period of agreement or after expiry
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thereof. He cannot also claim concurrent user. I may quote from the
judgment as under:
"85. Rather, in case the law with regard to the
rightful owner of the trademark and the act of
ex-licensee is examined, it emerges that either
during the licensing period of agreement or
after expiry, it is implicit and clear that the ex-
licensee is not entitled to claim the ownership
of a trademark nor he is permitted by law to
file an application for registration of the
trademark in his name nor is entitled to file the
petition for rectification of the same very
trademarks in which ex-licensee was using the
trademarks as a permissive user, otherwise it
would amount to fraud and misrepresentation.
The ex-licensee under no circumstances can
declare himself as owner of the trademark to
claim the concurrent user because as per
scheme of the Act, the benefit of concurrent
user can be derived by a party whose user is
honest and bonafide. In the present case, both
things are missing. In other words, he cannot
be allowed to make a hole in the plate in which
he was eating; such wrongful user would be
considered as stolen property which cannot
become rightful property in any amount of
user."
81. In fact, as held by this Court in FMI Limited v. Ashok Jain &
Ors., 2006 SCC OnLine Del 1423 and followed by this Court in
Dreams Lingerie Products v. Akash Chawdhary, 2022 SCC OnLine
Del 3018, in case of an ex-distributor, the test to be adopted in
determining the likelihood of confusion is more liberal in favour of
the plaintiffs.
82. In M/s Power Control Appliances & Ors. v. Sumeet Machines
Pvt. Ltd., (1994) 2 SCC 448, the Supreme Court has held that:
"Acquiescence is sitting by, when another is
invading the rights and spending money on it.
It is a course of conduct inconsistent with the
claim for exclusive rights in a trade mark,
trade name etc. It implies positive acts; not
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merely silence or inaction such as is involved
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Neutral Citation Number: 2023/DHC/001223
in latches....there can be only one mark, one
source and one proprietor. It cannot have two
origins. Where, therefore, the first defendant-
respondent proclaimed himself as a rival of
the plaintiffs and as joint owner it is
impermissible in law."
The Supreme Court, in circumstances similar to the present case, in
fact, granted an injunction in favour of the plaintiffs therein.
83. In view of the above, the plea of the learned senior counsels for
the defendants that the defendants have any independent right over the
use of the word „SONA‟, cannot be accepted.
Claim of passing off
84. The plea of the learned senior counsels for the defendants that
by use of a different logo along with the Corporate Name, the
defendants can escape the allegation of passing off, cannot also be
accepted. In the present case, the incorporation of the word „SONA‟
as part of its Corporate Name by the defendant no. 1 prima facie
appears malafide. The same is intended to show a relationship
between the plaintiffs and the defendant, while now there is no such
relationship. The Corporate Name itself, therefore, can lead to
confusion and deception in the minds of a third party of such
continued association/relationship between the plaintiffs and the
defendant no. 1.
85. I am, however, not impressed with the above submissions. The
fact remains that the plaintiff no.1 and the defendant no.1 continue to
deal with the same products, which are automobile parts. The
plaintiffs have asserted that they also have an After Sales supply of
such parts. Even otherwise, merely because the plaintiffs supply these
parts to OEM while the defendant no.1 supply these parts in After
Sales, in my opinion, would not make any difference to the claim of
passing off. Even the purchasers of such parts for After Sales service
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can be deceived into believing an association between the plaintiffs
and the defendant no.1, which though earlier existed, no longer exists.
86. Keeping in view the earlier adoption of the mark „SONA‟ by
the plaintiffs, its extensive use by the plaintiffs, and the likelihood of
deception and confusion being caused in the mind of an unwary
consumer of continued association between the plaintiffs and the
defendant no. 1 due to adoption of the word „SONA‟ as part of the
Corporate Name of the defendant no. 1, in my opinion, the plaintiffs
have been able to make out a good prima facie case for grant of an
interim injunction in their favour. The balance of convenience is also
in favour of the plaintiffs and against the defendants. The plaintiffs are
likely to suffer grave irreparable harm if the defendants are not
restrained from using the word „SONA‟ as part of the Corporate
Name and/or as trademark during the pendency of the present Suit.
87. The learned senior counsels for the defendants have further
urged that no claim of passing off can be made out against the
defendant no.1 as it is using a different logo and caters to a different
segment of the market. He submits that while the plaintiff no.1
supplies the goods to only the Original Equipment Manufacturers (in
short, „OEM‟), who work under bulk long-term contracts, the
defendant no.1 has its market post the sale of the vehicles. He submits
that the purchasers are different and so is the supply chain.
88. In view of the above, I find no merit in the applications, being
I.A. 7196/2020 and I.A.13971/2020, filed by the defendants seeking
rejection of the plaint and dismissal of the present suit. The said
applications are dismissed.
89. As far as the application, being I.A 6131/2020, filed by the
plaintiffs is concerned, the defendants, more specifically defendant no.
1, or any other persons claiming for or on their behalf are restrained
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Signing Date:23.02.2023
Neutral Citation Number: 2023/DHC/001223
from using the word „SONA‟ as part of their Corporate Name/Trade
Mark/Trade Name/Logo/Domain Name, in any manner, in relation to
any goods or services during the pendency of the present suit.
90. As I have found that the plaintiffs were guilty of concealment of
the disclaimer attached to the registration of the Trade Mark granted
under Application No.1707890, I saddle the plaintiffs with cost of
Rs.10 Lakhs, out of which cost of Rs.5 Lakhs be deposited with the
Delhi High Court Advocates‟ Welfare Fund and the remaining of Rs.5
Lakhs with the Delhi High Court Bar Clerk‟s Association.
91. It is clarified that any and all observations made hereinabove
are only prima facie in nature and made only for purposes of deciding
the present application. They shall neither bind nor influence this
Court while deciding the suit on merits after the parties have led their
respective evidence.
92. The applications are disposed of in the above terms.
CS(COMM) 277/2020
93. List on 29th March, 2023 before the learned Joint Registrar
(Judicial) for further proceedings.
NAVIN CHAWLA, J.
FEBRUARY 22, 2023/Arya/Ais/KP
Signature Not Verified
Digitally Signed By:SUNIL
Signing Date:23.02.2023
