Karnataka High Court

Sasken Technologies Ltd vs Istar Skill Development Pvt Ltd on 28 November, 2023

Author: V. Srishananda

Bench: V. Srishananda

                          1

     IN THE HIGH COURT OF KARNATAKA AT BENGALURU

      DATED THIS THE 28TH DAY OF NOVEMBER, 2023

                       BEFORE

        THE HON'BLE MR. JUSTICE V. SRISHANANDA

MISCELLANEOUS FIRST APPEAL No.3951/2021(IPR)

BETWEEN

SASKEN TECHNOLOGIES LTD.,
A COMPANY INCORPORATED UNDER
THE PROVISIONS OF THE COMPANIES ACT, 1956
HAVING REGISTERED OFFICE AT
No.139/25, DOMLUR LAYOUT
RING ROAD, DOMLUR POST
BENGALURU -560 071
REPRESENTED BY ITS AUTHORISED SIGNATORY
MR B RAMKUMAR
                                      ...APPELLANT
(By SRI MADHUKAR D AND SRI MANISH BIALA,
ADVOCATES)

AND

1.    iSTAR SKILL DEVELOLPMENT PVT. LTD.,
      A COMPANY INCORPORATED UNDER THE
      PROVISIONS OF THE
      COMPANIES ACT, 1956
      HAVING ITS REGISTERED OFFICE AT
      NO.3699/A, 9TH CROSS
      HAL 2ND STAGE, INDIRANAGAR
      BENGALURU -560 008

2.    SALESKEN TECHNOLOGIES PVT. LTD.
      A COMPANY INCORPORATED UNDER
                              2

    THE PROVISIONS OF THE
    COMPANIES ACT, 2013
    HAVING ITS REGISTERED OFFICE AT
    63/1, MAKAM PLAZA, 3RD MAIN ROAD
    18TH CROSS, MALLESHWARAM
    BENGALURU -560 055
                                   ...RESPONDENTS
(BY SRI DHYAN CHINNAPPA, SENIOR COUNSEL
ALONGWITH SRI M.V.SUNDARARAMAN AND
NEERAJ SASTRY, ADVOCATES FOR C/R1 AND R2)


     THIS MISCELLANEOUS FIRST APPEAL IS FILED
UNDER ORDER 43 RULE 1(r) READ WITH SECTION 151 OF
THE CODE OF CIVIL PROCEDURE, 1908, AGAINST THE
ORDER DATED 20.01.2021 PASSED ON I.A. NOs.1,2 AND 3
IN O.S.NO.6500/2020 ON THE FILE OF THE XVIII
ADDITIONAL CITY CIVIL JUDGE, BENGALURU CITY
(CCH.NO.10), DISMISSING I.A.Nos.1 TO 3 FILED UNDER
ORDER 39 RULE 1 AND 2 READ WITH SECTION 151 OF
CPC.

     THIS MISCELLANEOUS FIRST APPEAL HAVING BEEN
HEARD AND RESERVED FOR JUDGMENT, COMING ON FOR
'PRONOUNCEMENT OF JUDGMENT' THIS DAY, THE COURT
DELIVERED THE FOLLOWING:-

                        JUDGMENT

This Miscellaneous First appeal is filed by the plaintiff

challenging the validity of the Order dated 20.01.2021

passed in O.S.No.6500/2020 on the file of the XVIII

Additional City Civil Judge, Bengaluru, (CCH-10), whereby,

I.A.Nos.1 to 3 filed by the plaintiff under Order XXXIX Rule

1 and 2 r/w Section 151 of the Code of Civil Procedure,

came to be dismissed.

2. For the sake of convenience, parties are referred to

as plaintiff and defendants as per their original ranking

before the Trial Court.

3. Plaintiff filed a suit in O.S.No.6500/2020 with the

following prayer:

"WHEREFORE, the Plaintiff above-named most humbly prays that this Hon'ble be pleased to pass a judgment and decree as follows in favour of the Plaintiff.

A. Permanent injunction restraining the Defendants, their employees, officers, representatives, servants, agents, and all other persons claiming through or under the Defendants, from infringing upon the Plaintiff's registered trademarks using the mark 'SALESKEN', or any other word or mark which is deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN' and its variants;

B. Permanent injunction restraining the Defendants, its employees, officers, representatives, servants, agents, and all other persons claiming through or

under them, from, in any manner whatsoever, passing off their goods and services as those of the Plaintiff by adopting and/or using a deceptively similar mark to the of the Plaintiff's mark 'SASKEN' and its variants in any manner whatsoever,

C. Permanent injunction restraining the Defendants, their officers, servants, agents and all other persons claiming through or under them from, in any manner whatsoever, passing off their services as that being provided by the Plaintiff by using the domain name 'www.salesken.ai' or any other domain using the mart 'salesken', or any other word or mark that is deceptively similar to the Plaintiffs trademark 'SASKEN' and its variants.

D. Mandatory injunction directing the Defendants, their employees, officers, representatives, servants, agents, and all other persons claiming through or under the Defendants, to immediately and forthwith surrender to the Plaintiff for destruction, all printed matter, publications, advertising materials, including brochures, pamphlets, stationery, and any other materials bearing the mark "salesken" or any other word or mark that is deceptively similar to that of the Plaintiff's trademark 'SASKEN' and its variants.

E. Directing the Defendants to render honestly and faithfully true accounts of the profit that Defendants have derived by promoting its business and services using Identical/deceptively similar mark as that of the Plaintiff's registered trademarks "SASKEN" and its variants, and direct payment of such profits to the Plaintiff by way of damages for infringing and passing off the trade mark of the Plaintiff;

F. Grant the costs of these proceedings;

G. Grant any such other and further reliefs as this Hon'ble Court may deem fit in the circumstances of the case, in the interest of justice and equity."

4. Plaintiff laid the claim in respect of suit relief by

contending that plaintiff is a registered Company providing

vast number of services pertaining to product engineering

and digital transformation to enterprises across the world

involved in industries such as semiconductor, automotive,

industrials, consumer electronics, enterprise devices,

satellite communications, transportation industries etc.

Plaintiff being a Public Limited Company, its shares are

listed on the National Stock Exchange of the country and is

represented by its authorized signatory Mr.Deepak

Mahapatra. It is further contended that defendant No.1 is

also a Company incorporated under the Companies Act,

1956, and having its registered office in Bengaluru.

Defendant No.2 is a Private Limited Company incorporated

under the provisions of Companies Act and has its

registered office at Bengaluru.

5. Plaintiff contended that plaintiff was originally

incorporated in India in the year 1989 as ASIC

Technologies Pvt. Ltd., In the year 2000, plaintiff changed

its name to 'SASKEN' Communication Technologies Pvt.

Ltd., and has been using the word "SASKEN" in its name

and for its products and services ever since the year 2000.

Plaintiff having involved in several technological and allied

services, including hardware designing, software

development, device testing, and application development

for a period of three decades has earned goodwill and has

got a wide range of customer base including 100 of

customers who are 'Fortune 500' companies in the world

and plaintiff is a global leader in digital transformation

services. Plaintiff is having operations spread across three

continents, with its offices at Japan, United States of

America, Germany, Finland, United Kingdom, China,

Mexico and India.

6. It is further contended that, plaintiff's name

"SASKEN" is a distinctive mark that is well known in the

field of technological and allied services for several years

and therefore, they have been able to earn a goodwill

among its customers. The trade mark of the word

"SASKEN" and its various variants registered by plaintiff in

India are as under:

Sl.No.    Trade Mark              App./        Class        Date
                                  Reg.No.

1.        SASKEN MAKE THE         979752       9            27.12.2000
          RIGHT CONNECTION

2.        SASKEN                  1257468      42           26.12.2003
          COMMUNICATION
          TECHNOLOGIES
          LIMITED
3.        SASKEN                  1271810      16           10.03.2004
          COMMUNICATION
          TECHNOLOGIES
          LIMITED


4.       SASKEN                 2987847       9 & 16             17.06.2015

5.                              2987848       42                 17.06.2015

6.                              3736103       09, 38, 42         24.01.2018

7. Plaintiff obtained registration certificate in respect of

its trade marks in India and it also registered trade mark

containing words "SASKEN" in various countries detailed as

under:

App./ Sl.No Trade Mark Date Class Country Reg.No.

1. W201800798 07.04.2020 Finland 09, 38, 42 IR 1424537

2. 1424537 14.02.2019 Germany 09, 38, 42 IR 1424537

3. 2018-263528 13.02.2020 Japan 09, 38, 42 IR 1424537

4. 19.03.2019 09, 38, 42 United IR 1424537 Kingdom 79241447 United

5. 26.05.2020 09.38.42 6060892 states of IR 1424537 America SASKEN COMMUNICAT 09,16,38, European

6. ION 002042596 1.02.2002 42 Union TECHNOLOGI ES LIMITED European

7. 002040269 05.07.2002 09, 16, Union 9, 16, 37 United

8. SASKEN 3838173 28.09.2004 42 States of

America

9. SASKEN 1982003 10.01.2001 9 China

10. SASKEN 1784793 10.01.2001 42 China SASKEN COMMUNICAT

11. ION 1982059 10.01.2001 9 China TECHNOLOGI ES LIMITED SASKEN COMMUNICAT

12. ION 1784790 10.01.2001 42 China TECHNOLOGI ES LIMITED SASKEN COMMUNICAT

13. ION 1760897 10.01.2001 16 China TECHNOLOGI ES LIMITED SASKEN COMMUNICAT

14. ION 1759396 10.01.2001 38 China TECHNOLOGI ES LIMITED

15. SASKEN 1760898 10.01.2001 16 China SASKEN MAKE THE

16. RIGHT 1917696 15.01.2001 09 China CONNECTION AND DEVICE

8. Plaintiff has in its three decades operation, steadily

grown among the top companies in India and abroad

providing a number of technological services to its clients.

The annual turnover of the plaintiff for the financial year

2019-20 was INR 527,97,11,000 (Rupees five hundred and

twenty seven crores ninety seven lakhs and eleven

thousand).

9. It is further contended that in July 2020, plaintiff

found out through newspaper article that certain

technological services were being offered in the market by

the name "salesken" which bears the marked visual,

structural as well as phonetic similarity to the plaintiff's

trademark "SASKEN". Upon further enquiry, the plaintiff

was shocked to find out that the defendant No.1 has

obtained registration for the word "salesken" with the

Trademark Registry under class 42, with effect from

16.08.2019 and defendant No.1 stated that the word

"salesken" is proposed to be used by it in class 42 which

pertains to technological services and obtained registration

of the mark by suppressing the existence of the plaintiff's

trade mark, which is phonetically and visually similar to

the word "salesken", and also, by suppressing the fact that

plaintiff was already in the business of providing

technological services to its clients under the name

"SASKEN" for more than 20 years. The form TM-A dated

16.08.2019 filed by the defendant No.1 before the

Registrar of Trademarks, Chennai, seeking registration for

the word "salesken" is produced as a document by the

plaintiff along with plaint.

10. Plaintiff came to know that a company has been

incorporated on 28.02.2019 under the name "SALESKEN

TECHNOLOGIES PRIVATE LIMITED" which is defendant

No.2, and defendant No.1 and 2 were associated with

Mr.Sreeraman Vaidyanathan and Ms.Surga Sudharmma

Thailakan Ezhavappadi as promoters. The plaintiff found

out that there is a website with address www.salesken.ai

for offering certain technological services using artificial

intelligence and data analytics for the purpose of

improving the performance of its clients in sales. It is also

contended that goods and services are classified in India

for the purpose of trademark registration as per the

International Classification of goods and services

(hereinafter referred to as 'NICE Classification' for short)

published by the World Intellectual property Organization

('WIPO' for short) by virtue of Rule 20 of the Trademark

Rules, 2017. As per the said classification, Class 42 reads

as under:

"Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software".

11. The plaintiff being a multinational company its with

offices across the world was offering services in several

disciplines under the broad spectrum of "technological

services" as aforesaid which includes the research and

development of products, performing data analytics for the

betterment of the business of its clients, using Artificial

Intelligence (AI) and Machine Learning (ML) for creating

solutions for its clients and therefore, registration of the

word "salesken" and obtaining the trademark has thus

resulted in interfering with the established business of the

plaintiff and sought for decreeing of the suit as referred to

supra.

12. Upon service of suit summons, defendants entered

appearance and filed written statement denying the plaint

averments in toto and maintained that it is catering to the

needs of its clients in a separate and exclusive area.

Therefore, plaintiff's suit is not maintainable.

13. Defendants also contended that the registration of

the word "salesken" by the competent authorities is based

on requirement of law to be followed and therefore, it is

the malafide conduct of the plaintiff in filing the suit and

same needs to be dismissed with exemplary costs.

14. Defendants maintained that the mark "salesken" is a

registered trade mark and defendants have got statutory

right to use the said mark especially under the right

bestowed by Section 28(3) r/w Sections 30 and 31 of the

Trademark Act and plaintiff having initiated the

proceedings before the Intellectual Property Appellate

Board in relation to defendants trade mark viz.,

"salesken", further proceeding in the suit needs to be

stayed. Defendants also maintained that areas of

operation of business of plaintiff and defendants are totally

dissimilar and therefore, the Trademark of the plaintiff and

defendants would not have any bearing or connection with

each other and therefore, suit of the plaintiff is vexatious

and based on imaginary cause of action and sought for

dismissal of the suit.

15. Defendants further contended that there is no

similarity in the trademark of plaintiff and defendants

either in visual or in phonetic or in the structure except the

letters 'KEN' and therefore, suit of the plaintiff is to be

dismissed. It is also contended that letters "KEN" appears

in several trademarks and therefore, plaintiff cannot

maintain the suit against defendants and sought for

dismissal of the suit. Plaintiff, inter alia filed three

applications seeking an order of injunction vide I.A.Nos.1

to 3. The applications are opposed by the defendants by

filing written objections.

16. The learned Trial Judge heard the parties in detail on

the applications filed by the plaintiff and opposed by the

defendants and by the Order dated 20.01.2021, dismissed

all the three applications filed under Order XXXIX Rule 1

and 2 r/w Section 151 of the Code of Civil Procedure. The

prayers in I.A.Nos.1 to 3 are as under:

"For reasons sworn to in the accompanying affidavits, the Applicant-Plaintiff most humbly pray that this Hon'ble Court be pleased to grant an interim order restraining the Defendants, their officers, servants, agents, and all other persons claiming through or under them, in any manner whatsoever from infringing upon the Plaintiffs' registered trademarks by using the mark 'salesken', or any other word or mark which is deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN' and its variants, as part of their trade name or in any other manner whatsoever, pending the disposal of the instant suit, in the interests of justice and equity.

WHEREFORE, in light of the urgency pleaded, it is humbly prayed that this Hon'ble Court may be pleased to pass an ad-interim ex-parte order (by dispensing with the issuance of prior notice to the Defendants) in terms of the prayer above."

"For reasons sworn to in the accompanying affidavits, the Applicant-Plaintiff most humbly prays that this Hon'ble Court be pleased to grant an interim order restraining the Defendants, their officers, servants, agents, and all other persons claiming through or under them, in any manner whatsoever, passing off their services as that of the services of the Plaintiff using the mark ' salesken', or any other word or mark which is deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN' and its variants, as part of their trade name or in any other manner whatsoever, pending the disposal of the instant suit, in the interests of justice and equity

WHEREFORE, in light of the urgency pleaded, it is humbly prayed that this Hon'ble Court may be pleased to pass an ad-interim ex-parte order (by dispensing with the issuance of prior notice to the Defendants) in terms of the prayer above."

"For reasons sworn to in the accompanying affidavits, the Applicant-Plaintiff most humbly prays that this Hon'ble Court be pleased to grant an interim order restraining the Defendants, their officers, servants, agents, and all other persons claiming

through or under them, in any manner whatsoever, passing off their services as that of the services of the Plaintiff by using the domain name www.salesken.al or any other domain name incorporating marks that are deceptively similar to that of the Plaintiff's registered trademarks 'SASKEN and its variants, pending the disposal of the instant suit, in the interests of justice and equity.

WHEREFORE, In light of the urgency pleaded, it is humbly prayed that this Hon'ble Court may be pleased to pass an ad-interim ex-parte order (by dispensing with the issuance of prior notice to the Defendants) in terms of the prayer above."

17. The applications are supported by the affidavits of

the authorized signatory of the plaintiff (Assistant Vice

President-Legal) who is authorized signatory of the plaintiff

wherein, reiterating the contents of the plaint, plaintiff

maintained that they are entitled for an order of injunction

against the defendants.

18. In the objection statement of the defendants, the

contents of the written statement were reiterated and

contended that defendants had employed 100 employees

who are inter alia depending on salaries paid to them and

defendants business and turnover is entirely dependent on

reputation and goodwill of the name "salesken" and niche

area of the business is associated with and they have got

high ratings in www.g2.com and therefore, sought for

dismissal of injunction applications.

19. On behalf of parties, following judgments were relied

on by the parties:

Decisions relied on by the counsel for plaintiff:

"1. (2004)3 SCC 90 - Midas Hygiene Industries Pvt.Ltd.,

Vs.Sudhir Bhotia & ors.

2. ILR (2014)3 DEL 1734 - Abbott Healthcare Pvt.Ltd., Vs.Raj Kumar Prasad and others.

3. 2014 SCC Online DEL 23 - Dabur India Limited Vs. Real Drinks (P) Ltd and others

4. (1996) 5 SCC 74- N.R.Dongre & Others Vs. Whirlpool Corporation & another

5. (2002) 3 SCC 65 - Lakshmikant V Patel Vs. Chetanbhai Shah and Anr.

6. 2013 SCC Online Bom 895 - Som Distilleries and Breweries Ltd. Vs. SABMiller Ltd

7. (1997) 3 SCC 443 - Tayabbhai M. Bagasarwalla & Anr.Vs. Hind Rubber Industries Pvt. Ltd

8. (2003) 7 SCC 375 - In the case of Anil Panjwani.

9. WP.No.1035/2009 of Bombay High Court between RB.Upadhyay Vs. State Commission for Consumer Disputes.

10. (2007)8 SCC 449 -Prestige Lights Ltd. Vs. State Bank of India.

11. (2017) SCC Online Bom 7237 - Pidilite Industries Ltd. Vs. Poma Ex Products.

12. (2016) 2 SCC 683 - S.Syed Mohideen Vs. P.Sulochana Bai.

13. Judgment of Delhi High Court in CS(COMM) 174/2019 between Peps Industries Pvt. Ltd. Vs. Kurlon Ltd.

14. (2007) 1 Delhi 409 M/s Ansul Industries Vs. M/s.

Shiva Tobacco Company.

15. (1969) 2 SCC 131 - K.R.Chinna Krishna Chettiar Vs. Shri Ambal & Co.

16. (2002) 2 SCC 147 - Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd.

17. (2009) SCC Online Cal. 531 - Sony Kabushiki Kaisha Vs. Mahalaxmi Textile Mills.

18. (2010) SCC Online Del 3806 - Marico Ltd.Vs. Agro Tech Foods Ltd.

19. (1954) SCC Online Cal 228 - H.D.Corporation Vs. Dy.Registrar of Trademarks.

20. 1961 KLJ 177 - Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories.

21. (2004) 5 SCC 257 - Godfrey Philips India Ltd.

Vs. Girnar Food and Beverages Pvt. Ltd.

22. ILR (2002) 1 Delhi 220 - Info Edge (India) Pvt.

Ltd. &Ors. Vs. Shailesh Gupta & Ors."

The counsel for the defendants has relied on the following decisions:

1. (2008) 10 SCC 723 - Khoday Distilleries Ltd.

Vs. The Scotch Whisky Association & Ors.

2. (2001) 2 SCR 743 - Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.

3. (2016) 67 PTC 271 - Reliance Industries Ltd.

Vs. Concord Enviro Systems Pvt. Ltd.

4. 1994 Supp(3) SCC 215 - JR.Kapoor Vs.Micronix India.

5. (2020) 82 PTC 501 - Bharat Biotech Inter national Ltd. Vs.Optival Health Solutions Pvt.

Ltd. And ors.

6. ILR (2010) II Delhi 85 - Cadila Health Care Ltd.

Vs. Gujarat Co-operative Milk Marketing Federations Ltd. & Ors.

7. MANU/DE/1862/2020

8. MANU/KA/2583/2019

9. (2018) 9 SCC 183 - Nandhini Deluxe. Vs. Karnataka Co-operative Milk Producers Federation Ltd.

10. ILR 2002 KAR 407 - Smt.Lakshmamma Vs. K.S.Sheshamma

11. ILR 1995 KAR 1705 - M.D.Nanaiah Vs. K.Nagaraju.

12. 1995 Supp (4) SCC 465 - Modern Food Industries India Ltd. Vs. Sachidanand Dass & another.

13. (1992) 4 SCC 167 - State of Jammu & Kashmir Vs. Mohd. Yaqoob Khan

14. ILR 2017 KAR 68 - Karnataka Rajya Rashtreeya Grameena Udyoga Khatri Yojane Naukarana Sangha(R) and others Vs.Dr.Sri.K.Radhakrishna Reddy and others."

20. On considering the rival contentions of the parties,

Trial Court formulated the following points for

consideration:

1. Whether the plaintiff has made out a prima facie case for grant of ad-interim temporary injunction as prayed in IA.No.1?

2. Whether the plaintiff proves that the balance of convenience lies in their favour?

3. Whether the plaintiff will be put to irreparable loss and hardship if an order of an-interim injunction is not granted?

4. What order?"

21. Based on the material placed by the parties, the

learned Trial Judge, considered the arguments put forth on

behalf of the parties, and in the light of the principles of

law enunciated in the decisions relied on by the parties,

the learned Trial Judge concluded that plaintiff has not

made out a prima facie case for grant of injunction as

prayed and dismissed all the three applications.

22. Being aggrieved by the same, plaintiff has filed the

present appeal.

23. Reiterating the grounds urged in the appeal

memorandum, Sri Manish Biala, Advocate, contended that

the learned Trial Judge has misconstrued the scope and

object of Order XXXIX Rule 1 and 2 of CPC in dismissing

the applications, having regard to the facts and

circumstances found in the case on hand, whereby,

plaintiff is put to great hardship and injury and sought for

allowing the appeal.

24. He further contended that the word "SASKEN" and

"salesken" are practically similar both in phonetic as well

as in design whereby right of the plaintiff per se has been

infringed by the defendants. Therefore, contention of the

plaintiff was well within the scope and ambit of the rights

of the plaintiff insofar as seeking an order of injunction

against defendants. The Trial Court having not been able

to properly appreciate the rival contentions of the parties

dismissed the applications of plaintiff in the impugned

order and the same has resulted in miscarriage of justice

and sought for allowing the appeal.

25. Per contra, Sri Dhyan Chinnappa, learned Senior

Counsel representing the defendants supported the

impugned judgment by contending that the area of

operation of plaintiff and defendants are altogether

different.

26. He further contended that clientele of plaintiff and

defendants are altogether different and the marks are also

totally dissimilar and therefore, the contention of the

plaintiff that their business has been affected by usage of

the registered trade mark "salesken" by defendants at no

stretch of imagination can be countenanced in law and

sought for dismissal of the appeal.

27. In support of their arguments, appellant and

respondents have relied on the following judgments:

1. "Amritdhara Pharmacy Vs.Satya Deo Gupta; AIR 1963 SC 449

2. K.R.Chinnakrishna Setty Vs. Sri Ambal; 1972 SCC Online Karnataka 157

3. Micro Hitech Industries Vs. Uttam Goutam Appliances; ILR 2017 KAR 4699

4. Lakshmikant Patel Vs. Chetanbhai Shah (2002) 3 SCC 65

5. Midas Hygiene Vs.Sudhir Bhatia 2004(28) PTC 121 (SC)

6. T.V.Venugopal Vs. Ushodaya Enterprises; (2011) 4 SCC 85

7. Khoday Distilleries Ltd. V. The Scotch Whisky Association and others -(2008) 10 SCC 723

8. Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd. - (2001) 2 SCR 743

9. Reliance Industries Ltd. V. Concord Enviro Systems Pvt. Ltd.

10. J.R.Kapoor v. Micronix India - 1994 Supp (3) SCC

11. Bharat Biotech International Ltd. V. Optival Health Solutions Pvt.. Ltd. And other - (2020) 82 PTC 501.

12. Cadila Health Care Ltd. V. Gujrat Co-operative Milk Marketing Federation Ltd. And others - ILR (2010) II DELHI 85.

13. Judgment of the High Court of Delhi in CS (Comm) 217/2020 reported in MANU/DE/1862/2020

14. Judgment of the Karnataka High Court in R.F.A.No.1462/2012 reported in MANU/KA/2583/2019.

15. Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Milk Producers Federation Ltd. -(2018) 9 SCC 183

16. S.Syed Mohideen v. P. Sulochana Bai -(2016) 2 SCC 683.

17. Skyline Education Institute (India) Pvt. Ltd. V. S.L.Vaswani and Anr. - (2010) 2 SCC 142.

18. ITC Limited v. CG Foods (India) Pvt. Ltd. -2021 (88) PTC 178 (Karn)"

28. This Court, perused the entire material on record

meticulously, in view of the rival contentions of the parties.

On such meticulous perusal of the material on record, the

following points would arise for consideration:

(i) Whether the plaintiff has made out a prima facie case that the trade mark of the plaintiff and defendants are similar and therefore, right of the plaintiff has been infringed by use of the word "salesken" by the defendants and thereby entitled for an order of injunction?

(ii) Whether refusal to grant injunction in favour of plaintiff has resulted in hardship and irreparable injury to the plaintiff?

(iii) What Order?

29. The list of authorities furnished on behalf of the

parties and principles stated therein has been taken note

of by this Court. In the case on hand, a memo came to be

filed on 20.11.2023 giving the details of trademarks of the

appellant and trademarks of respondent, as under:

Trademarks of the Appellant

Sl. Trade Mark and Date of Date of Page No. No. Application No. filing grant of the Trial Court Record.

1     SASKEN      MAKE 27.12.2000 25.07.2008       68
      THE        RIGHT
      CONNECTION
      979752
2     SASKEN           26.12.2003 14.12.2007       69
      COMMUNICATION
      TECHNOLOGIES
      LIMITED
      1257468
3     SASKEN           10.03.2004 25.03.2008       71
      COMMUNICATION
      TECHNOLOGIES
      LIMITED 1271810
4     SASKEN           17.06.2015 14.11.2017     73-74
      2987847
5     SASKEN           17.06.2015 13.12.2017     75-76
      2987848
6     SASKEN           24.01.2018 12.04.2019     77-78
      3736103


                 Trademarks of the Respondent

Sl.   Trade Mark and Date          of Date    of Page    No.
No.   Application No. filing          grant      of the Trial
                                                 Court
                                                 Record.
1     salesken            16.08.2019 15.02.2020      364
       979752

30. The trade mark of the appellant is depicted as under:

The trade mark of the respondent is depicted as under:

31. Having regard to the scope of the appeal as is

contemplated under Order XLIII Rule 1 CPC, this court

analyzed the material on record. In the first place, the

material on record would sufficiently establish that plaintiff

has been carrying on the business on and from 1989

initially as 'ASIC Technologies Limited' and over a period of

time, changed its name to 'SASKEN Communications

Technologies Private Limited' and has been using the word

SASKEN in its name, products and services. The service

provided by the plaintiff is in the field of technological and

allied services including hardware designing, software

development, device testing and application development.

Plaintiff has also earned sufficient good will in the said field

and has got a good number of clientele.

32. The material on record also shows that the products

and technological innovations carried on by the plaintiff

have been recognized and plaintiff is having 70 patents to

its credit. Plaintiff clientele includes hundreds of

Prestigious Fortune 500 companies and therefore, plaintiff

claims that it is a global leader in digital transformation

services. The material on record also prima facie disclose

that SASKEN is a distinctive trade mark and is well

recognized in the field and it has been recognized in

several classes in the field including class 42. The word

SASKEN and its variants registered by the plaintiff in India

and abroad has therefore, resulted in plaintiff enjoying

proprietary rights. Plaintiff being the registered trade

mark owner of SASKEN, cannot allow anybody else to

misuse the said trade mark or any trademark similar to the

trade mark registered by the plaintiff. Pleadings also

establish prima facie that on 01.07.2020, plaintiff noticed

that first defendant obtained registration of the word

'salesken' with the Trade Mark Registry under Class 42

with effect from 16.08.2019. It is the contention of the

plaintiff that first defendant has suppressed the plaintiff's

mark 'SASKEN' which is practically similar to the word

'salesken' both phonetically and virtually. It is also the

allegation of the plaintiff that defendant is catering to its

services to the customers who are in need of technological

services. It is also contended that the website address of

the first defendant viz., www.salesken.ai is offering

technological services using Artificial Intelligence and Data

analytics and therefore, sought action against the first

defendants.

33. The contentions urged on behalf of the plaintiff is

flatly refuted by the first defendant by contending that the

mark 'salesken' and its logo is coined by the first

defendant with sufficient background. The etymology for

coining of the word 'salesken' is derived by the services

offered by defendant inasmuch as 'System for Appropriate

Lead Engagement in Sales using Knowledge Enhancing

Nuggets'. It was emphatically denied by the first

defendant that product and services of 'salesken' exactly

resemble the product and services offered by the plaintiff,

and that plaintiff and defendant are operating in two

different and distinct areas whereby absolutely there is no

confusion in the mind of the customers who are desirous of

obtaining necessary services offered by plaintiff and

defendant. First defendant further contended that as

'salesken' Artificial Intelligence models are customised for

the specific sales pitch of the customer data set.

Therefore, it is not offering general services to the

customers at large and therefore, there is no iota of truth

in the action sought to be initiated against the defendant

by the plaintiff and sought for dismissal of the appeal.

34. From the above rival contentions, it is crystal clear

that dispute surrounds around the usage of the trademark

'SASKEN' and that of 'salesken'.

35. As could be seen from the written arguments

furnished on behalf of the appellant, the word 'SASKEN'

has been coined by using the word 'SAS' from 'Silicon

Automation System' and 'KEN' meaning 'Knowledge'.

Whereas, as referred to supra, the word 'salesken' was

coined meaning 'System for Appropriate Lead Engagement

in Sales using Knowledge Enhancing Nuggets'.

36. The test which has to be carried out when an

injunction remedy is sought for by the plaintiff by

contending that the word 'SASKEN' and 'salesken' are

similar and thereby the defendant is required to be

refrained from using the word 'salesken' is, whether both

the marks are identical or similar whereby injunction can

be granted against the defendant.

37. In the case on hand, on the first look of both the

marks referred supra, the phonetics, number of letters and

visual depiction of the marks are altogether different and

there is no similarity.

38. As per Section 28(3) r/w Sections 30 and 31 of the

Trade Marks Act provides as a statutory right to use a

trademark and another trademark holder cannot injunct a

person who has registered his trademark ordinarily.

Moreover, with regard to registration of Trademark is

pending before the appropriate forum. Till said dispute is

decided finally, defendant can make use of its trademark.

39. However, if the plaintiff seeks an order of injunction

against the defendant from using a trademark, he has to

make out a case that the trade mark used by the plaintiff

and defendant is identical or almost similar to each other.

When the said test is applied as referred to supra, the

trade mark registered by the plaintiff as 'SASKEN' and

'salesken' used by the defendant are neither identical nor

almost similar so as to create confusion among the general

public.

40. In the light of the above legal requirements, when

the trademarks of appellant and respondent are compared,

it is crystal clear that neither the alphabets nor the design

nor phonetics thereof are similar to each other. In the

appellant's mark, there is a red coloured prism like mark

clearly visible and word 'SASKEN' is made to appear in

capital letters. Whereas, in the case of the mark of the

respondent, it is a black coloured square with a red

coloured right mark on the left hand side and alphabets

are small letters and alphabets also contain combination of

black and red colour. In 'salesken', 'sales' is made in black

colour and 'ken' in red colour.

41. As such, either on the first look or on detailed

analysis, the two marks are neither identical nor near to

similarity in any manner.

42. Hon'ble Apex Court had an occasion to deal with the

similarity aspects in the case of Cadila Health Care Limited

supra, wherein, Their Lordships were required to decide

the similarity between Peter Scot Whisky and Scotch

Whisky. The Apex Court, while deciding the said case has

ruled that, Court has to consider that "class of purchasers

who are likely to buy the goods bearing the marks they

require; on their education and intelligence and a degree

of care they are likely to exercise in purchasing and or

using the goods."

43. Similar was the opinion of the Apex Court in the case

of Khoday supra. Further, there cannot be any dispute as

to principles of law enunciated in the judgment of the Apex

Court in the case of Lakshmikant V Patel, Midas Hygiene

Industries Pvt.Ltd., and T.V.Venugopal supra.

44. In Lakshmikant V Patel's case, their Lordships of the

Apex Court ruled that 'injunction would be necessary if

there is a probability of confusion in the business'.

45. In the case of Midas Hygiene Industries Pvt.Ltd.,

their Lordships held that 'injunction is a must if there is a

threat of infringement and passing of action'.

46. The facts involved in Midas Hygiene Industries

Pvt.Ltd. are totally different from the facts involved in the

present case inasmuch as, in the case of Midas Hygiene

Industries Pvt.Ltd., two words namely, 'Laxman Rekha'

and 'Magic Laxman Rekha' resembled each other except

for the word 'Magic'.

47. So also, in the case of T.V.Venugopal referred to

supra, the Apex Court while dealing with the 'law of action

of passing of', took into consideration the test of common

field of activity to common class of consumers and ruled

that if the two trademarks are affecting the common class

of customers in respect of common services offered by

plaintiff and defendant, there is always an injury to the

reputation and good will of the rights earlier registered

trademark holder and trade mark holder.

48. In the case on hand, prima facie material would

reveal that there is no common class of customers in

respect of the services offered by plaintiff and defendant.

Any further opinion at this juncture by this Court having

regard to the scope of Order XLIII of CPC with regard to

the minute details as is argued by the parties, would

definitely affect the rights of the parties during the trial

one way or the other.

49. It is settled principles of law and requires no

emphasis that Courts while dealing with application for

grant of temporary injunctions cannot hold a mini trial and

bestow its attention to the minute details in the case of the

parties. All that this Court has to bear in mind is that

there is a serious dispute and a triable issue made out by

the plaintiff and till such issue is decided, is there a serious

injury caused to the rights of the plaintiff which becomes

irreversible by the time the suit is finally decided and

whereby there is an irreparable loss occasioned to the

plaintiff in refusing to grant of injunction.

50. In the case on hand, having regard to the fact that

the registered trade mark of the plaintiff and registered

trade mark of the defendant, on the first look does not

resemble each other either on the phonetics or on the

visuals. As such, this Court is of the considered opinion

that the plaintiff has failed to make out a case for granting

an order of temporary injunction by exercising powers

vested in this Court under Order XLIII Rule 1 of CPC.

51. The learned Trial Judge has rightly appreciated the

material on record and has rightly dismissed the request of

the plaintiff to injunct the defendant from using the

trademark 'salesken'.

52. In view of the foregoing discussion, the following:

ORDER

(i) Appeal is hereby dismissed.

(ii) It is made clear that the observations made by this Court during the course of this Order is only for the purpose of disposal of the present appeal and shall not affect the rights of the parties during trial, one way or the other.