Madras High Court
Csg Holding Company Ltd vs Saint-Gobain Glass France on 25 August, 2021
O.S.A.(CAD) Nos.59, 61 and 62 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 25.08.2021
CORAM :
THE HON'BLE MR.SANJIB BANERJEE, CHIEF JUSTICE
AND
THE HON'BLE MR.JUSTICE P.D.AUDIKESAVALU
O.S.A.(CAD) Nos.59, 61 and 62 of 2021
and C.M.P.Nos.13277, 13279, 13290, 13221 and 13291 of 2021
CSG Holding Company Ltd.,
CSG Building,
No.1, 6th Industrial Road,
Shekou Shenzen, P.R.China 518067
rep. By its Power Agent, Pradeep Yadav. ... Appellant in
all appeals
Vs
1.Saint-Gobain Glass France
A Fresh Societe Anonyme (SA)
Les Miroirs, 18, Avenue d Alsace,
92400, Courbevoie France,
rep. By power Agent, T.Bhaskaran.
2.M/s.Saint Gobain Glass India Ltd.,
Level 7, Sigapi Achi Building,
18/3, Rukmoni Lakshmipathy Road,
Egmore, Chennai 600 008. ... Respondents in
all appeals
Appeals filed against the common order dated 11.12.2019 in
A.No.5012 of 2019, O.A.No.982 of 2012 and O.A.No.981 of 2012 in
C.S.No.754 of 2012 on the file of original side of this court.
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O.S.A.(CAD) Nos.59, 61 and 62 of 2021
For the Appellant : Mr.Arun C.Mohan
For the Respondents/
Caveators : Mr.P.S.Raman,
Senior Counsel,
for M/s.Madan Babu.
*****
COMMON JUDGMENT
(Delivered by the Hon'ble Chief Justice)
The appeals by the defendant arise out of a common judgment
and order of December 11, 2019 passed in a suit for infringement and
passing-off involving the mark "SGG" and a triangular device used by
the plaintiffs in connection with their sale of glass and glass products.
2. The defendant claims that the SGG mark that it uses as a part
of its trade mark emanates from the name of the defendant and is
registered in several countries. The defendant complains that an ex
parte injunction obtained by the plaintiffs has, in effect, been
continued by the judgment and order impugned by failing to take into
account relevant considerations, particularly the fact that the letters
used as a part of the defendant's mark are not used in connection with
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O.S.A.(CAD) Nos.59, 61 and 62 of 2021
the plaintiffs' product.
3. The impugned judgment has narrated the facts, including the
Saint Gobain Group being established in the year 1665 and being a
pioneer in the manufacture of glass, glassware and mirrors under the
broader name "Saint-Gobain". The history of the plaintiffs has been
recorded that they supplied 357 mirrors for the Hall of Mirrors in the
Palais de Versailles in 1684. The plaintiffs apparently began exporting
their products outside France in 1856 and established a foreign plant in
the year 1937. The plaintiffs and their associate concerns apparently
operate in 64 countries and the plaintiffs and their products enjoy
considerable reputation and goodwill in this country and the trading
and general public associate the mark "SGG" with Saint Gobain glass.
4. The impugned judgment refers to the registration of the word
marks SGG and Saint Gobain in several classes and the Saint Gobain
logo with the triangular device. Apparently, the plaintiffs came to be
aware of the defendant Chinese company and its use of the mark "SG"
with a triangle device which was deceptively similar to the plaintiffs'
mark. The Chinese company's attempt at registration in this country
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O.S.A.(CAD) Nos.59, 61 and 62 of 2021
was objected to by the plaintiffs. The relevant application is pending
along with the plaintiffs' objection thereto. It appears that, quite
needlessly, in addition to the infringement and passing-off action, a
case of breach of copyright was also attempted to be made out by the
plaintiffs.
5. There is much confusion in such regard. Once a particular
graphical representation is a part of a logo or a device or is used as a
part of a trade mark, an action for infringement or passing-off, as the
case may be would suffice and an attendant copyright claim may be
completely unnecessary. However, such aspect of the matter has to
be left to the trial of the suit.
6. The trial court has referred to several of the leading
judgments in the field, including the judgments reported at (1989) 1
SCC 264 (Madan & Co. vs. Wazir Jaivir Chand); (2001) 5 SCC 73
(Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd); and 1985 (5)
PTC 1 (Del) (B.K.Engineering Co. vs. Ubhi Enterprises), to ultimately
reach the conclusion that a prima facie case had been made out.
Several provisions of the governing statute were also noticed,
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O.S.A.(CAD) Nos.59, 61 and 62 of 2021
including the rival contentions as to whether the marks in the form
asserted had been used in connection with any product or had been
used only in trade correspondence.
7. Upon referring to the various judgments, particularly the one
in Cadila, the trial court rendered the view that where common marks
are included in the rival trade marks, "more regard is to be paid to the
parts not common and the proper measure is to look at the marks as a
whole, but at the same time not to disregard the parts which are
common". The trial court also referred to word marks that, when said
out aloud, are phonetically similar and found in the present case that
the marks were both phonetically and visually similar.
8. Considering the business, reputation and history of the
plaintiffs and their worldwide reputation, including in this country, an
injunction was granted.
9. There does not appear to be any infirmity in the judgment and
order impugned. Relevant considerations appear to have been taken
into account after narrating the rival contentions. There is no doubt
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O.S.A.(CAD) Nos.59, 61 and 62 of 2021
that there is an element of discretion at large and such discretion has
not been exercised in a perverse manner warranting interference at
the appellate stage. In any event, the injunction has continued for a
considerable period of time and it is best that the parties make every
endeavour to ensure that the trial is concluded as expeditiously as
possible.
10. The judgment and order impugned dated December 11,
2019 do not call for any interference. However, the defendant will be
entitled to canvass all grounds available in course of the trial,
irrespective of the prima facie expression of any view on any aspect by
the trial court in the judgment and order impugned herein.
11. O.S.A. (CAD) Nos.59, 61 and 62 of 2021 are disposed of.
C.M.P.Nos.13277, 13279, 13290, 13321 and 13291 of 2021 are
closed. There will be no order as to costs.
(S.B., CJ.) (P.D.A., J.)
25.08.2021
Index : no
sra
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O.S.A.(CAD) Nos.59, 61 and 62 of 2021
THE HON'BLE CHIEF JUSTICE
AND
P.D.AUDIKESAVALU, J.
(sra)
and 62 of 2021
25.08.2021
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