w w w . L a w y e r S e r v i c e s . i n



CSG Holding Company Ltd., Rep. By its Power Agent, Pradeep Yadav v/s Saint-Gobain Glass France, A Fresh Societe Anonyme (SA), Rep. By power Agent, T. Bhaskaran & Another


Company & Directors' Information:- U. P. POWER CORPORATION LIMITED [Active] CIN = U32201UP1999SGC024928

Company & Directors' Information:- D B POWER LIMITED [Active] CIN = U40109MP2006PLC019008

Company & Directors' Information:- INDIA POWER CORPORATION LIMITED [Active] CIN = L40105WB1919PLC003263

Company & Directors' Information:- INDIA POWER CORPORATION LIMITED [Amalgamated] CIN = U40101WB2003PLC097340

Company & Directors' Information:- SAINT-GOBAIN INDIA PRIVATE LIMITED [Active] CIN = U26109TN1997PTC037875

Company & Directors' Information:- B L A POWER PRIVATE LIMITED [Active] CIN = U40102MH2006PTC165430

Company & Directors' Information:- B L A POWER HOLDING PRIVATE LIMITED [Active] CIN = U67190MH2008PTC179228

Company & Directors' Information:- L V S POWER PRIVATE LIMITED [Active] CIN = U40100TG1996PTC023552

Company & Directors' Information:- S L S POWER CORPORATION LIMITED [Active] CIN = U40109AP2005PLC047008

Company & Directors' Information:- S L V POWER PRIVATE LIMITED [Active] CIN = U40102KA2002PTC030448

Company & Directors' Information:- S. E. POWER LIMITED [Active] CIN = L40106GJ2010PLC091880

Company & Directors' Information:- E O S POWER INDIA PRIVATE LIMITED [Active] CIN = U32109MH1985PTC037094

Company & Directors' Information:- D C POWER LIMITED [Strike Off] CIN = U40109TG1996PLC025996

Company & Directors' Information:- POWER CORPORATION OF INDIA LIMITED [Amalgamated] CIN = U50101WB1997PLC084060

Company & Directors' Information:- B V POWER PRIVATE LIMITED [Active] CIN = U40106DL2011PTC213428

Company & Directors' Information:- B L B HOLDING PRIVATE LIMITED [Active] CIN = U74899DL1992PTC048521

Company & Directors' Information:- D N S HOLDING PRIVATE LIMITED [Active] CIN = U74990MH2009PTC190675

Company & Directors' Information:- R AND H POWER COMPANY PRIVATE LIMITED [Active] CIN = U51109UP1965PTC003067

Company & Directors' Information:- B R POWER LTD [Active] CIN = U40106WB1995PLC073567

Company & Directors' Information:- N M S POWER PRIVATE LIMITED [Active] CIN = U51109WB1999PTC089747

Company & Directors' Information:- P R B POWER PRIVATE LIMITED [Strike Off] CIN = U40101TG1995PTC020647

Company & Directors' Information:- A & V GLASS INDIA PRIVATE LIMITED [Active] CIN = U27310DL2007PTC167893

Company & Directors' Information:- S V G POWER PRIVATE LIMITED [Active] CIN = U40300AP2012PTC084435

Company & Directors' Information:- V B HOLDING PRIVATE LIMITED [Active] CIN = U93000DL2012PTC238276

Company & Directors' Information:- F C B HOLDING PRIVATE LIMITED [Strike Off] CIN = U74899DL1985PTC020941

Company & Directors' Information:- S K J HOLDING PVT LTD [Active] CIN = U65923WB1992PTC055761

Company & Directors' Information:- G B YADAV & COMPANY PVT LTD [Active] CIN = U63090WB1994PTC064888

Company & Directors' Information:- A M FRESH PRIVATE LIMITED [Active] CIN = U52203KL2021PTC067315

Company & Directors' Information:- INDIA POWER PRIVATE LIMITED [Active] CIN = U31900DL1995PTC070096

Company & Directors' Information:- V H HOLDING PVT LTD [Strike Off] CIN = U67120MH1982PTC026260

Company & Directors' Information:- M POWER INDIA PRIVATE LIMITED [Active] CIN = U31908MH2012PTC234343

Company & Directors' Information:- A N S INDIA POWER PRIVATE LIMITED [Active] CIN = U51101DL2014PTC266873

Company & Directors' Information:- GLASS AND GLASS (INDIA) PRIVATE LIMITED [Active] CIN = U26100MH1996PTC102597

Company & Directors' Information:- M M K POWER PRIVATE LIMITED [Strike Off] CIN = U40106AP1998PTC030796

Company & Directors' Information:- G N L HOLDING PRIVATE LIMITED [Active] CIN = U24102UP1994PTC017131

Company & Directors' Information:- SAINT CO INDIA PRIVATE LIMITED [Active] CIN = U74899DL1982PTC013436

Company & Directors' Information:- A B C HOLDING PRIVATE LTD. [Active] CIN = U74899DL1987PTC028300

Company & Directors' Information:- B N GLASS PRIVATE LIMITED [Strike Off] CIN = U00321KA1995PTC018164

Company & Directors' Information:- M. S. GLASS INDIA LIMITED [Strike Off] CIN = U74999WB2011PLC166844

Company & Directors' Information:- C R E M POWER PRIVATE LIMITED [Strike Off] CIN = U40101DL2001PTC111631

Company & Directors' Information:- D T POWER PRIVATE LIMITED [Strike Off] CIN = U40300AP2015PTC097226

Company & Directors' Information:- O L G POWER P LTD [Active] CIN = U30007TN1991PTC020898

Company & Directors' Information:- G S POWER LIMITED [Strike Off] CIN = U40102KA2010PLC054033

Company & Directors' Information:- POWER AND POWER PVT LTD [Active] CIN = U31300AS1989PTC003282

Company & Directors' Information:- P D M POWER PRIVATE LIMITED [Active] CIN = U40104AS2014PTC011780

Company & Directors' Information:- S B S POWER PRIVATE LIMITED [Strike Off] CIN = U40100AP2012PTC083965

Company & Directors' Information:- FRESH (INDIA) PVT LTD [Strike Off] CIN = U99999MH1987PTC043865

Company & Directors' Information:- B & G POWER LIMITED [Active] CIN = U40105PB2010PLC033765

Company & Directors' Information:- A J HOLDING COMPANY PRIVATE LIMITED [Amalgamated] CIN = U45201TN2005PTC056046

Company & Directors' Information:- S B GLASS PVT LTD [Active] CIN = U36900WB2006PTC108559

Company & Directors' Information:- S POWER PRIVATE LIMITED [Active] CIN = U19202DL1986PTC026505

Company & Directors' Information:- G M POWER PRIVATE LIMITED [Strike Off] CIN = U40105PN2003PTC017857

Company & Directors' Information:- POWER INDIA PVT LTD [Strike Off] CIN = U31102WB1983PTC036315

Company & Directors' Information:- S AND S POWER PRIVATE LIMITED [Active] CIN = U40109PY2004PTC001824

Company & Directors' Information:- U S POWER PRIVATE LIMITED [Under Process of Striking Off] CIN = U40103MH2009PTC189364

Company & Directors' Information:- R C GLASS PRIVATE LIMITED [Strike Off] CIN = U36912WB2013PTC198212

Company & Directors' Information:- K P M POWER PRIVATE LIMITED [Strike Off] CIN = U40102KA2008PTC046804

Company & Directors' Information:- POWER-X PRIVATE LIMITED [Strike Off] CIN = U99999DL1970PTC005331

Company & Directors' Information:- S K POWER INDIA PRIVATE LIMITED [Strike Off] CIN = U31101KA2006PTC039172

Company & Directors' Information:- R G D POWER PRIVATE LIMITED [Strike Off] CIN = U41000TG1996PTC023809

Company & Directors' Information:- P R HOLDING LTD [Strike Off] CIN = U51109WB1983PLC035677

Company & Directors' Information:- M M R POWER PRIVATE LIMITED [Active] CIN = U31104DL2008PTC174079

Company & Directors' Information:- S J POWER PRIVATE LIMITED [Strike Off] CIN = U45207HR2012PTC045937

Company & Directors' Information:- T C POWER PRIVATE LIMITED [Strike Off] CIN = U40101PB2009PTC033405

Company & Directors' Information:- H. & T. POWER PRIVATE LIMITED [Active] CIN = U40106MH2016PTC287646

Company & Directors' Information:- S & O POWER PRIVATE LIMITED [Active] CIN = U40107MH2010PTC206447

Company & Directors' Information:- V D M-POWER PRIVATE LIMITED [Active] CIN = U74999MH2015PTC262999

Company & Directors' Information:- A C R POWER PRIVATE LIMITED [Strike Off] CIN = U74900UP2010PTC040987

Company & Directors' Information:- W N POWER PRIVATE LIMITED [Strike Off] CIN = U40101JK2013PTC004009

Company & Directors' Information:- V H GLASS PRIVATE LIMITED [Strike Off] CIN = U26101DL2005PTC133695

Company & Directors' Information:- C K S POWER PRIVATE LIMITED [Strike Off] CIN = U40101KA2010PTC052199

Company & Directors' Information:- G C I POWER PRIVATE LIMITED [Active] CIN = U40107KA2010PTC053656

Company & Directors' Information:- R. C. POWER PRIVATE LIMITED [Strike Off] CIN = U40100GJ2009PTC058005

Company & Directors' Information:- J R J POWER PRIVATE LIMITED [Active] CIN = U40300GJ2015PTC082396

Company & Directors' Information:- THE GLASS CORPORATION PVT LTD [Strike Off] CIN = U74999RJ1947PTC000025

Company & Directors' Information:- D V N POWER PRIVATE LIMITED [Strike Off] CIN = U40101TG2007PTC053069

Company & Directors' Information:- A. R. POWER PRIVATE LIMITED [Strike Off] CIN = U74999DL2007PTC161616

Company & Directors' Information:- V B P HOLDING PRIVATE LIMITED [Strike Off] CIN = U67120GJ1981PTC004670

Company & Directors' Information:- A D P HOLDING PVT LTD [Strike Off] CIN = U99999GJ1981PTC004674

Company & Directors' Information:- N R P HOLDING PRIVATE LIMITED [Under Process of Striking Off] CIN = U67120GJ1981PTC004664

Company & Directors' Information:- N H P HOLDING PRIVATE LIMITED [Strike Off] CIN = U67120GJ1981PTC004671

Company & Directors' Information:- N A P HOLDING PRIVATE LIMITED [Strike Off] CIN = U67120GJ1981PTC004673

    O.S.A.(CAD) Nos. 59, 61 & 62 of 2021 & C.M.P. Nos. 13277, 13279, 13290, 13221 & 13291 of 2021

    Decided On, 25 August 2021

    At, High Court of Judicature at Madras

    By, THE HONOURABLE CHIEF JUSTICE MR. SANJIB BANERJEE & THE HONOURABLE MR. JUSTICE P.D. AUDIKESAVALU

    For the Appellant: Arun C. Mohan, Advocate. For the Respondents: P.S. Raman, Senior Counsel for M/s. Madan Babu, Advocate.



Judgment Text

(Prayer: 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.)Common JudgmentSanjib Banerjee, CJ.1. 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 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 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, 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 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 con

Please Login To View The Full Judgment!

cluded 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.
O R