Madras High Court
M/S.Sakthi Sai Safety Glass India vs Compagnie De Saint-Gobain on 7 February, 2025
OSA (CAD) Nos.15 to 19 of 2025
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 07.02.2025
CORAM
THE HON'BLE MR.K.R.SHRIRAM, CHIEF JUSTICE
AND
THE HON'BLE MRS.JUSTICE R.KALAIMATHI
OSA(CAD) Nos. 15 to 19 of 2025
and CMP Nos.2145, 2157, 2161, 2176 and 2178 of 2025
1. M/s.Sakthi Sai Safety Glass India,
A Partnership Firm Through its Partner,
Mr.B.Ganesh, No.16, 17 and 18,
Anna Industrial, Gopal Nagar,
Vadaperumbakkam, Madhavaram,
Chennai - 600 060 Tamil Nadu.
2. Sakthi Sai Glass Traders,
Through its Partners, Mr.B.Ganesh and
Mr.Karunakaran, No.934 (Old No.559),
Poonamallee High Road, Arumbakkam,
Chennai 600 106, Tamil Nadu. .. Appellants
in all OSAs.
Vs
1. Compagnie De Saint-Gobain
Tour Saint Gobain, 12 Place de l Iris 92400,
Courbevoie France, Rep. by its Constituted
Attorney, Mr.Animesh Saha,
Having office at Floor No.7, Sigapi Achi Building,
18/3, Rukmini Lakshmipathy Road,
Egmore , Chennai 600 008,
Tamil Nadu, India.
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OSA (CAD) Nos.15 to 19 of 2025
2. Saint-Gobain India Private Limited,
Rep. by its Authorized Signatory Mr.Animesh Saha,
Floor No.7, Sigapi Achi Building, 18/3,
Rukmini Lakshmipathy Road, Egmore,
Chennai 600 008, Tamil Nadu, India. .. Respondents
in all OSAs.
Prayer: Appeals filed under Section 13 of the Commercial Courts Act, 2015,
read with Order XXXVI Rule 9 of Original Side Rules against the common
order dated 09.12.2024 passed in O.A.Nos.867, 866, 868, 865 and 864 of
2024 in C.S. (Comm Div) No.227 of 2024 on the file of original side of this
Court.
For Appellant(s): Mr.G.Ramesh
For Respondent(s): Mr.P.S.Raman
Senior Counsel
Mr. M.S.Bharath
*****
COMMON JUDGMENT
(Judgment of the Court was delivered by the Hon'ble Chief Justice)
The appeals have been filed impugning a common order dated
09.12.2024 passed by the learned Single Judge by which an interim
injunction was given in favour of plaintiffs, that is respondents herein, in
respect of the contract entered into between plaintiffs and first defendant,
who is the first appellant.
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2. The interim injunction granted, in effect, is restraining defendants,
that is appellants from directly or indirectly dealing with any products or
rendering any services under the Trade Mark or any other mark which is
identical / similar to plaintiffs' Trade Mark "Saint-Gobain" and committing
infringement, passing off, copyright in the plaintiffs' original artistic work,
domain name and dilution of plaintiffs' Trade Mark "Saint-Gobain".
3. Plaintiffs are stated to be a reputed player in the glass
manufacturing industry and have been using the Trade Mark "Saint-
Gobain" for many years. The details of the credentials are disclosed in the
plaint. It is recorded in the impugned order that these facts have not been
disputed by defendants.
4. Respondents (hereinafter referred to as 'plaintiffs') had appointed
appellants (hereinafter referred to as 'defendants') as their glass processor
and under a contract, defendants were permitted to use the plaintiffs' Trade
Mark "Saint-Gobain". It is stated that the period of contract had expired by
efflux of time and was not renewed. It is plaintiffs' case that the
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OSA (CAD) Nos.15 to 19 of 2025
agreement having expired, the relationship with defendants has come to an
end. Therefore, defendants were no longer permitted to use the plaintiffs'
Trade Mark "Saint-Gobain". Despite issuing Cease and Desist notice,
defendants continued to use the plaintiffs' Trade Mark "Saint-Gobain" for
sale and distribution of toughened glass. The glass was manufactured by
some other party/parties. It is plaintiffs' case that defendants had even
given an undertaking to stop using the Trade Mark "Saint-Gobain", which
undertaking was breached.
5. Once plaintiffs' came to know that defendants have re-commenced
the use of plaintiffs' Trade Mark "SAINT-GOBAIN", plaintiffs filed the
interim injunction applications without going for pre-suit mediation as
prescribed under Section 12A of the Commercial Courts Act, 2015.
Plaintiffs have filed an affidavit stating that as urgent reliefs were required,
it became a necessity for plaintiffs to approach the Court without
exhausting the statutory requirement of Section 12A of the Commercial
Courts Act, 2015, by going for pre-suit mediation.
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6. Defendants filed a counter denying the allegations and raised the
defence of - a) plaintiffs not having complied with the mandatory
requirement of Section 12A of the Commercial Courts Act, 2015, the relief
sought should not be granted; b) as the claim arises out of a contract
entered into between the parties, Trademark Infringement Suit is not
maintainable; c) the contracts provide for arbitration and therefore, the
matter should be referred to arbitration; d) there has been suppression of
material facts by plaintiffs; e) despite defendants were ready and willing to
go for an amicable settlement and there were exchange of correspondences
to that effect, present suit has been filed without complying with the
requirement of Section 12A of the Commercial Courts Act, 2015 and hence,
the suit is not maintainable.
7. It is plaintiffs' case, which of course not disputed by defendants, is
that plaintiffs' Trade Mark "SAINT-GOBAIN" has attained a distinctive
identity by long usage. According to plaintiffs, hence, defendants cannot be
permitted to use the Trade Mark "SAINT-GOBAIN".
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8. On the issue of non-compliance with the statutory requirement of
Section 12A of the Commercial Courts Act, Sri.Raman submitted that an
affidavit of one Animesh Saha affirmed on 12.1 1.2024 was filed, in which,
it is recorded that several rounds of discussion happened between parties to
amicably resolve the disputes and on 07.02.2024, defendants addressed an
e-mail referring to the discussions and indicating that they will suspend
using the infringing mark. Based on the settlement discussions with
defendants and the said e-mail dated 07.02.2024, plaintiffs even issued a
draft undertaking letter on 16.02.2024 to defendants to be executed by
defendants. The same, however, was not signed by defendants. Even in
the plaint, there are averments to that effect at paragraph Nos.49 to 76. In
fact, in the plaint, there is also a reference to the e-mail dated 07.02.2024
from defendants assuring that they shall discontinue the use of the
infringement Trade mark. We have to note that none of the allegations has
been denied in the counter filed for opposing the interim injunction.
Mr.Ramesh states that the affidavit was filed after the plaint was filed. The
affidavit only reflects what transpired before the plaint was filed and
therefore, this objection of Mr.Ramesh is irrelevant. In any case, a reply to
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OSA (CAD) Nos.15 to 19 of 2025
the affidavit could have been filed. It was not done. Hence, the allegations
are not denied.
9. Apropos of the defence of invocation of the arbitration clause
raised by defendants, it is apposite to refer to the law enunciated by the
Supreme Court in Vidya Drolia v. Durga Trading Corporation1 , to the effect
that whether a subject-matter can or cannot be arbitrated should
necessarily be dealt with on case-to-case basis, rather than having a bold
exposition that certain subject-matters are incapable of arbitration. The
Apex Court in the said decision has propounded a fourfold test and held as
under:
“76. In view of the above discussion, we would like to propound a
fourfold test for determining when the subject-matter of a dispute in
an arbitration agreement is not arbitrable:
76.1. (1) When cause of action and subject-matter of the dispute
relates to actions in rem, that do not pertain to subordinate rights in
personam that arise from rights in rem.
76.2. (2) When cause of action and subject-matter of the dispute
affects third-party rights; have erga omnes effect; require centralised
adjudication, and mutual adjudication would not be appropriate and
enforceable.
76.3. (3) When cause of action and subject-matter of the dispute
relates to inalienable sovereign and public interest functions of the
1 (2021) 2 SCC 1
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OSA (CAD) Nos.15 to 19 of 2025
State and hence mutual adjudication would be unenforceable.
76.4. (4) When the subject-matter of the dispute is expressly or by
necessary implication non-arbitrable as per mandatory statute(s).”
10. The Apex Court further observed that “These tests are not
watertight compartments; they dovetail and overlap, albeit when applied
holistically and pragmatically will help and assist in determining and
ascertaining with great degree of certainty when as per law in India, a
dispute or subject-matter is non-arbitrable. Only when the answer is
affirmative that the subject-matter of the dispute would be non-arbitrable.”
1 1. The law laid down by the Apex Court is to the effect that if the
right claimed is in rem, then it is not arbitrable; and if the right claimed is
in personam, it is arbitrable.
12. In the case on hand, the learned Single Judge after considering
the overall conspectus of the matter has arrived at a prima face view that
since the contracts entered into between the parties got
expired/terminated, any dispute pertaining to the usage of the Trademark
is an in rem dispute, as it affects the world at large.
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13. Moreover, it is not in dispute that defendants have not filed an
application under Section 8 of the Arbitration and Conciliation Act, 1996
seeking reference of the dispute to arbitration, but, on the contrary, have
chosen to file a counter on merits in the injunction application filed by
plaintiffs and, by their conduct, acquiesced to the jurisdiction of the court,
where action has been brought by the plaintiffs. Therefore, we are of the
view that the defence raised seeking invocation of arbitration clause does
not merit consideration at this belated stage.
14. As regards the third point of suppression of material facts, the
learned Single Judge has come to a finding of fact that there was no
suppression of material fact. The learned Single Judge has relied upon the
exchange of communication between parties to come to this conclusion.
Paragraph 32 of the impugned order reads as under:
"32. Prima facie this Court does not find any suppression of material
facts by the applicants/plaintiffs as seen from the documents filed
along with the plaint. There has been sufficient exchange of
communications between the applicants/plaintiffs and the
respondents/defendants. On a prima facie consideration of those
communications, this Court does not notice from the correspondence
that the applicants/ plaintiffs were willing to extend the period of the
contract. On the other hand, only the respondents/defendants, who
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OSA (CAD) Nos.15 to 19 of 2025
have stated in the reply to the cease and desist notice that they have
stopped using the manner and style of co-branding of the applicants' /
plaintiffs' Trade Mark "Saint Gobain" as per the rights given to them
under the expired service level agreement dated 16.08.2022.
Admittedly, the applicants/plaintiffs is a leading player, both in the
domestic and international market, in the filed of manufacturing and
selling of toughened glasses and other allied products."
15. The suit is still pending before the learned Single Judge. The
defendants have not filed the written statement. Defendants, as per the
licensing agreement, were allowed to use the plaintiffs' Trade Mark.
Pursuant to the licensing agreement, defendants were permitted to use the
following style of co-branding:-
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OSA (CAD) Nos.15 to 19 of 2025
After the period of contract expired and the same was not renewed,
defendants were allegedly purchasing the glass products of someone else,
and, in our view, trying to pass off as plaintiffs' product. Defendants
started using the following style of branding:
16. It is plaintiffs' case that by using the words "SAINT-GOBAIN Seva"
in defendants' style of branding, plaintiffs' Trade Mark is infringed. Prima
facie, having seen both the logos, we are satisfied that there is
infringement. Sri.Raman, on instructions, stated that plaintiffs will have no
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OSA (CAD) Nos.15 to 19 of 2025
objection if defendants stop using the words "Glass Tempered Using SAINT-
GOBAIN Seva Furnace". Sri.Ramesh replied saying that defendants were
actually using "SAINT-GOBAIN Seva Furnace" which was a furnace it had
purchased from plaintiffs and therefore, defendants are only informing as
to what process it uses and which furnace is used for toughening the glass.
Sri.Raman submitted that it would still be an infringement of Trade Mark.
17. In our view, the balance of convenience would tilt in favour of
plaintiffs because any person purchasing defendants' product might get
influenced to buy the product assuming that it was a 'SAINT-GOBAIN'
product. We clarify that this is also only our prima facie view, since the suit
itself is pending.
18. We find no merit in the appeals. Appeals are, accordingly,
dismissed. Mr.Raman is pressing for costs. A sum of Rs.2,00,000/- (Rupees
two lakhs only) is imposed as costs, to be paid by defendants (appellants)
to plaintiffs (respondents). This amount shall be paid within two weeks
from today by way of cheque drawn in favour of advocate on record for
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OSA (CAD) Nos.15 to 19 of 2025
plaintiffs.
19. We are informed that the written statement is yet to be filed.
Mr.Ramesh states that the written statement will be filed and copy served
within 30 days from today. Statement is accepted and time granted.
Within two weeks thereafter, parties shall exchange the affidavit of
documents and within two weeks after exchange of affidavits, shall also
exchange statement of admission and denial. The suit be listed, subject to
the convenience of the trial Court, on 25.04.2025, for framing of issues.
Parties shall file agreed draft issues and separate list of issues on which
they are unable to agree with.
Consequently, interim applications are closed.
(K.R.SHRIRAM, CJ.) (R.KALAIMATHI, J.)
07.02.2025
sra
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OSA (CAD) Nos.15 to 19 of 2025
The Hon'ble Chief Justice
and
R.Kalaimathi, J.
(sra)
To
The Section Officer,
VR Section, Original Section,
Madras High Court, Chennai.
O.S.A. (CAD) Nos.15 to 19 of 2025
07.02.2025
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