1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL JURISDICTION NOTICE OF MOTION NO. 4019 OF 2007 IN SUIT NO. 2930 OF 2007 KSB Aktiengesellschaft & Anr. .... Plaintiffs. V/s. KSB Real Estate and Finance Private Ltd. .... Defendants. ....... Mr. Ashish Kamath i/b. M/s. Bharat Shah & Co. for the Plaintiffs. Mr. Ruchir Tolat i/b. M/s. L.C. Tolat & Co. for the Defendants. ........ CORAM : DR. D.Y. CHANDRACHUD, J. 11TH FEBRUARY 2008. P.C. :- An interlocutory injunction has been sought by the Plaintiffs in an action for infringement and passing off. The First Plaintiff is corporation incorporated under the laws of the Federal Republic of 2 Germany. The case of the Plaintiffs is that the letters 'KSB' form an essential part of the corporate name of the First Plaintiff, having been adopted with reference to the surnames of the founders of the First Plaintiff. The company was founded in 1871. The name of the company was changed so as to incorporate the letters KSB on or about 16th September 1988. The First Plaintiff, it is claimed, is known as KSB in Germany and the group companies are known worldwide with the same acronym for more than a hundred years. The First Plaintiff has 27 manufacturing sites worldwide with subsidiaries and representatives in over a hundred countries. The Second Plaintiff was incorporated on 11th April 1960. The First Plaintiff holds 40.54% of the share capital of the Second Plaintiff. The Second Plaintiff is a registered user in India of some of the marks which are owned by the First Plaintiff. The First Plaintiff has another wholly owned subsidiary by the name of KSB Tech Pvt. Ltd. The First Plaintiff carries on the business of manufacturing pumps, valves and spare parts, besides which, it is engaged in providing engineering and related services. 3 The First Plaintiff applied for and obtained registration of diverse trade marks using the letters KSB in respect of goods falling in classes 6,7,9,11,16,37 and 41. The Second Plaintiff is a registered user of six trade marks. A list of the group companies of the Plaintiffs worldwide has been annexed in Exhibit ' D' to the plaint which reveals a presence in nearly 70 countries. The sales turnover of the Second Plaintiff in respect of the mark KSB was about Rs.406 crores for the year 2006. The figures of sales promotion which have been disclosed in the plaint show that for the year 2005-06, an amount of Rs.231.00 lakhs was expended. In sum and substance therefore the case of the Plaintiffs is that the mark KSB constitutes a well-known trade mark internationally with a presence in India. The Defendant has adopted the word mark KSB as part of its trading name and corporate style. The defence to the action for passing off and infringement urged at the hearing of the Motion is that the areas of activity of the Defendant are restricted to real estate and finance within the geographical limits of Greater Mumbai. Hence, it has been 4 submitted that there would be no possibility of deception. The second submission which has been urged is that there are other companies which use the word mark KSB as part of their trading name and corporate style. Hence, the submission is that the word mark KSB cannot be regarded as being distinctive of the name of the Plaintiffs. These were the two defences which were urged at the hearing of the motion. In so far as the first defence is concerned, the submission overlooks the provisions of Section 29(4) of the Trade Marks Act, 1999. Section 29(4) provides as follows :- “ S.29(4) – A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which -- (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and 5 (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.” These provisions show that a registered mark may be infringed by the use of the mark in relation to goods or services which are not similar to those to which the mark is registered. The requirement under the law is that the registered trade mark must have a reputation in India and the use of the mark without due cause would take unfair advantage of or would be detrimental to the distinctive character or reputation of a registered mark. The provisions of Section 29(4) came to be introduced into the Trade Marks Act, 1999 in order to extend the protection that was available in an action for infringement. In view of the provisions of Section 29(4), it would be no defence to urge that the mark of the Defendant is being used in relation to goods and services which are not similar for those to which the mark of the Plaintiffs registered. The Plaintiffs have prima-facie established, a significant reputation in India. The use of the same mark by the 6 Defendant would be detrimental to the distinctive character and repute of the mark of the Plaintiff. The second submission which is to the effect that there are other companies which use the same mark is without substance. In paragraph 7 of the rejoinder, the Plaintiffs have averred that a cease and desist notice has been issued to all the third parties referred to in the statement annexed at Exhibit – 1 to the affidavit-in-reply (save and except for KSB Tech Pvt. Ltd. which is a 100% wholly owned subsidiary of the First Plaintiff). By an order dated 3rd July 2007, the Delhi High Court is stated to have restrained a company by the name of KSB Exports Pvt. Ltd. from exporting goods under the trade mark/name KSB and the order was stated to be confirmed on 19th November 2007. Similarly, it has also been stated that in pursuance of an application filed by the Plaintiffs under Section 22 of the the Companies Act, 1956, the Regional Director, by his orders dated 21st November 2007 directed two companies namely KSB Prints Pvt. Ltd., Pune and KSB Eastern Engineering Services Pvt. Ltd., Mumbai to change their names. The Plaintiffs have further stated that when a company by the name of KSB 7 Tracon Pvt. Ltd. at Kolkata was found to be using the same trade name/mark, a cease and desist notice issued to the company. Upon receipt of the notice, the Chartered Accountant of the Company informed the Plaintiffs' Advocate that the company had already merged with Oswal Resources Pvt. Ltd. and no company using the trade name KSB was consequently in existence. The Plaintiffs have established a prima-facie case both on the basis of an action for infringement and for passing off. The mark used by the Defendant is identical to the mark of the Plaintiff. In an action for passing off as well, the existence of a common field of activity is not required to be established. Reference in this connection may be made to the Judgment of the Division Bench in Aktiebolaget Volvo V/s. Volvo Steels Limited (1998 PTC) (paragraph 61 page 93). In an action for infringement and for passing off, the balance of convenience would lie in favour of the grant of an injunction. Irreparable injury is liable to result if an injunction was not granted. 8 The Notice of Motion is accordingly made absolute in terms of prayer clauses (a) and (b).