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Super Max IPR Holdings AG v/s Tigaksha Metallics Pvt. Ltd.

    Notice of Motion (L) No. 2615 of 2018 in Comm. IP Suit (L) No. 1476 of 2018

    Decided On, 26 October 2018

    At, High Court of Judicature at Bombay

    By, THE HONOURABLE MR. JUSTICE S.J. KATHAWALLA

    For the Appearing Parties: Ravindra Kadam, Senior Advocate, Ashish Kamat, Pooja Kshirsagar, Pranay Chitale, Vedant Jalan I/by M/s. AZB & Partners, Advocates.



Judgment Text

1.Not on board. Upon mentioning, taken on board.

2. By this Notice of Motion, the Plaintiffs seek ex-parte ad-interim reliefs in terms of prayer clause (a)(i) of the Notice of Motion. I have heard Mr. Kadam, Senior Advocate in support of this application and considered paragraphs 9.12 and 9.22 of the Plaint and paragraph 5 of the Affidavit in Support of Notice of Motion. In view of the averments made therein, I am satisfied that the case has been made out by the Plaintiff under Order 39, Rule 3 of the Code of Civil Procedure, 1908, to consider an exparte application for grant of ad-interim injunctive reliefs in terms of the Notice of Motion. The object of the injunction would be defeated if such notice is given. Hence, I am proceeding to hear and consider the Plaintiff's Application for ex-parte ad-interim injunctive reliefs.

3. Mr. Kadam submits that the Plaintiffs are part of the Supermax Group, which is engaged in the business of manufacture and sale of blades, razors and other shaving products ("the products"). Plaintiff No. 1 is a company incorporated in Switzerland, and by virtue of an Assignment Agreement date 29th November 2010 [Exhibit 'B' to the Plaint] asserts the ownership of Plaintiff No. 1's trademarks [Exhibit 'E' to the Plaint]. Post the execution of the Assignment Agreement dated 29th November 2010, Plaintiff No. 1 has applied for bringing its name on record as the subsequent registered proprietor of Plaintiff No. 1's trademarks. Plaintiff No. 1 states that it has paid and discharged a total consideration of Rs. 90,60,00,000/- to the original proprietor viz. Supermax International Private Limited ("SIPL") for transfer and assignment of Plaintiff No. 1's trademarks and their respective registrations (both Indian and International). On this basis Plaintiff No. 1 asserts ownership to Plaintiff No.1's trademarks. The necessary averments in this regard, are contained in paragraph 3 of the Plaint.

4. Similarly, in paragraph 4 of the Plaint, the Plaintiffs have narrated flow of title of Plaintiff No. 2's trademarks. This is, under a Business Transfer Agreement dated 30th December 2010 ("the BTA") and an Assignment Deed dated 18th March 2011 [Exhibit 'F' to the Plaint]. Plaintiff No. 2 has also applied, to the Registrar of Trademarks for bringing its name on the record as subsequent proprietor of Plaintiff No.2's trademarks, the relevant documents in this regard are at Exhibits 'G' and 'H' of the Plaint. On this basis, the Plaintiffs assert their registered proprietorship of Plaintiff No. 1 and 2's registered trademarks ("the suit marks").

5. The Plaintiffs' assert that Plaintiff No. 1 is the Intellectual Property Rights ("IPR") holding company of the Supermax Group, of which the Plaintiffs and Defendant No. 1 is a part. Considering this, Plaintiff No. 1 had executed licenses dated 25th July 2012 [Exhibits 'I' and 'K' to the Plaint] for manufacture and sale of goods bearing Plaintiff No. 1's marks. Though initially Defendant No. 1 (as Plaintiff No. 1's licensee) manufactured and sold certain goods bearing Plaintiff No. 1's trademarks, from 2015 onwards Plaintiff No. 1 has used the suit marks only for manufacture of the products on a job work basis for and on behalf of Plaintiff No. 2. This is, under a Job Work Agreement dated 1st April 2015 [Exhibit 'N' to the Plaint], which has expired by efflux of time on 31st March 2018 [paragraph 5.7, page 18 of the Plaint]. Under this Job Work Agreement, Defendant No. 1 has used the trademarks (including variants) of Zorrik, Supermax, Vidyut, Samrat, Rise, Dollar and Thames. These trademarks which are 31 in number are listed at paragraph 5.8 of the Plaint. The factum of Defendant No. 1 not having independently used the suit marks from 2015, till February 2018 is stated in paragraph 5.10 of the Plaint.

6. Mr. Kadam states that the Plaintiffs have set out in paragraphs 6.1 to 6.4 of the Plaint, the extensive sales made and promotional activities and expenditure incurred by Plaintiff No. 2, for and in respect of the products bearing the suit trademarks. It is thereafter, stated [paragraph 7 of the Plaint] that from February 2018, there have been significant disputes between Plaintiff No. 2 and Defendant No. 1 and also, interse between the shareholders of Defendant No. 1. This led to earlier proceedings (including, before this Court) under section 9 of the Arbitration and Conciliation Act, 1996 ('the 1996 Act'). My attention has been invited to the orders dated 16th and 22nd February 2018 [Exhibits 'S' and 'T' to the Plaint], by virtue of which, amongst others, Defendant No. 1 was not to use the machinery to manufacture any products bearing the trademarks set out in paragraph 4.7 of the Petition filed under Section 9 of the 1996 Act ('the Section 9 Petition'). In the Section 9 Petition, Defendant No. 1 had taken out a Notice of Motion (L) No. 500 of 2018 ("NM-500"). My attention has been invited to paragraphs 12, 20 to 24 of NM-500 [pages 385, 388 to 390 of the Plaint], which in my view are relevant. These paragraphs, indicate, an acceptance of Plaintiff No. 1's ownership rights in Plaintiff No. 1's trademarks; the Assignment Agreement dated 29th November 2010; the BTA; and Defendant No. 1's status as a license of Plaintiff No. 1's marks.

7. On this basis, Mr. Kadam submits that there cannot be any dispute or challenge to the Plaintiffs' proprietorship of the suit marks or the fact that Defendant No. 1 was using the same as a licensee of Plaintiff No. 1 and/or the Job Work Agreement dated 1st April 2015 (since expired) executed with Plaintiff No. 2. It is then submitted that Defendant No. 1 has indulged in past acts of infringement. This was initially, by wrongfully and illegally transacting with products bearing the suit marks in favour of Defendant No. 2. In this context, it is submitted that on 15th August 2018, in proceedings before the Arbitral Tribunal (since constituted) Defendant No. 1 has asserted its entitlement to use the suit trademarks and Defendant No. 2 has filed an affidavit disclosing dealings with Plaintiff No. 2's products bearing the suit marks and which were unauthorisedly and wrongfully sold by Defendant No. 1 to Defendant No.2. This is therefore, a past act of infringement.

8. It is then submitted that on 12th September 2018, Plaintiff No. 1 has addressed a communication to Defendant No. 1 [Exhibit 'X' to the Plaint] inter alia recording termination and/or terminating the License Agreement. It is submitted, that Defendant No. 2 has wrongfully sought to evade service of the termination letter [paragraph 8.3 of the Plaint]. Hence, Defendant No. 1 whose license has been duly and lawfully terminated, seeks to act evasive. This is with a view to unauthorisedly, wrongfully and illegally use the suit marks and infringe the Plaintiffs' rights as a registered proprietor thereof.

9. It is thereafter, submitted that there is immediate urgency in moving the present Application. This is because, though initially and from 16th February 2018, there has been a prohibition against Defendant No. 1 from using the machinery to manufacture products bearing the 31 trademarks out of the suit marks, however, on 17th October 2018, the Arbitral Tribunal [Exhibit 'Z' to the Plaint] has passed an order inter alia vacating the earlier restraint on Defendant No. 1 from using the said trademarks, on the ground that the Section 9 Petition (transferred and heard as a section 17 Application before the Arbitral Tribunal) did not contain reliefs in respect thereof. The relevant parts of the Arbitral Tribunal's order dated 17th October 2018 are at paragraphs 100 to 102 of the said order [pages 655 and 656 to the Plaint]. However, on Plaintiff No. 2's oral application the ad-interim order dated 16th February 2018 granted by this Court in terms of the first sentence of paragraph 2(j) thereof has been continued upto and including 31st October 2018 [page 662 to the Plaint]. The Plaintiffs thereafter, submit that Defendant No. 1 despite the expiry of the Job Work Agreement and termination of the licenses, is making an attempt to use the suit marks. This would necessarily constitute infringement. In support of their contention to grant urgent and ex-parte ad-interim reliefs, reliance has been placed on Defendant No. 1's representations on a website viz., www.indiamart.com [Exhibit 'AA' and 'BB' to the Plaint] to show that Defendant No. 1 has intention to use the suit trademarks. The Plaintiffs also submit [paragraph 8.8 of the Plaint] that they have received intimations from their distributors and retailers that the Defendants are soliciting and approaching them, on the basis that they are entitled to use the suit marks [Exhibits 'CC' and 'DD' to the Plaint]. In this regard, the Plaintiffs have placed reliance on an Affidavit of one Mr. Piyush Jain (of Shree Mahavir Corporation), who is a Mumbai Distributor of Plaintiff No. 2's products stating that he was approached by Defendant Nos. 1 and 2 stating that they were entitled to use the suit marks and manufacture and sell products bearing the same. Defendant Nos. 1 and 2 have also represented that they had already commenced production of products bearing the suit marks and they would be ready and available for the market in the first week of November 2018. The said Mr. Jain, also states that similar approaches have been made by Defendant Nos. 1 and 2 to other distributors. Relying on such material and the past conduct of Defendant Nos. 1 and 2, it is submitted that Defendant Nos. 1 and 2 will leave no stone unturned to infringe and violate the Plaintiffs' registered suit marks. Defendant Nos.1 and 2, are or appear to be in a complete state of readiness to immediately launch their products being the suit marks ("impugned products") and they would do so immediately and on the eve of the expiry of the restraint continued by the Arbitral Tribunal. Considering the past history between the parties and the conduct of Defendant Nos. 1 and 2, who inter alia operate under the instructions and control of Defendant Nos. 3 to 7 and 10, it is reasonably apprehended and believed that they would flood the market with the impugned products so as to inflict maximum infringement, injury and damage upon the Plaintiffs and this would irretrievably prejudice the Plaintiffs' rights as the owners and proprietors of the suit marks. It is also on this basis, that the present ex-parte application has been moved.

10. I have considered the aforesaid facts and documents placed before me. From the same, it is evident that the Plaintiffs are the registered proprietors of the trademarks mentioned at Exhibits E and G to the Plaint. Defendant No. 1's status, has been either as a licensee of Plaintiff No. 1 or under the Job Work Agreement dated 1 st April 2015 (since, expired) executed with Plaintiff No. 2. It appears to be an undisputed position on record that the said Job Work Agreement has expired. Equally, Plaintiff No. 1 had executed a license in favour of Defendant No. 1, which has been terminated. The Plaintiffs are the registered proprietor of the said trademarks. Defendant No. 1's own statements in Notice of Motion No.500 of 2018 also accept Plaintiff No. 1's proprietorship of the said trademarks and their status as being Plaintiff No. 1's licensee. As regards the license granted in favour of Defendant No. 1, the Plaintiffs have asserted that they have terminated the same vide Plaintiff No. 1's letter dated 12th September 2018 [Exhibit 'X' to the Plaint]. It also appears, that Defendant No. 1 has attempted to evade service of this termination notice. This conduct on the part of Defendant No. 1, does not inspire much confidence. Be that as it may, a license Agreement is inherently determinable, and the Plaintiffs appear to have unequivocally determine the same. In this view of the matter, Defendant No. 1 does not prima facie seem to have right, title and/or interest to use the suit marks. Hence, any use thereof by Defendant No. 1 or any of the other Defendants, would be unauthorised, illegal and constitute infringement. This is because, the Plaintiffs being the registered proprietors of the suit marks are opposed and objected to such use.

11. In addition thereto, the past conduct of Defendant Nos.1 and 2 does not inspire much confidence. In the first instance, this Court in the Section 9 Petition and by its order dated 16th February 2018, restrained Defendant No. 1 from use of the machines to manufacture products bearing the trademarks set out at paragraph 4.7 of the Section 9 Petition. This restraint has been vacated by the Arbitral Tribunal on the ground that there were no reliefs claimed before it, restraining use of the said trademarks by Defendant No. 1. As such, post 31st October 2018, the Plaintiffs would be unprotected vis-a-vis any acts of infringement of the suit trademarks by the Defendants. The aforesaid is liable to be viewed with Defendant No. 1's past conduct wherein it dealt with Plaintiff No. 2's products bearing some of the suit marks, in favour of Defendant No. 2. That itself, would prima facie be a past act of infringement. In addition thereto, the facts narrated and documents relied in paragraphs 8.3 to 8.10 of the Plaint [pages 35 to 37] make out a strong prima facie case that Defendant No. 1 appears to have already started manufacture of products and packaging material bearing the suit marks. If this is so, the same would constitute infringement. The statements made in this paragraph are borne out by Exhibits 'AA' to 'EE' of the Plaint and the affidavit of Mr. Piyush Jain referred to above. The submissions advanced on behalf of the Plaintiff that the Defendants are indulging in further acts of infringement and if notice of this Application is given to the Defendants they would act in undue haste and flood the market with the impugned products, appear to be well justified.

There is therefore, an imminent need to grant ex-parte ad-interim reliefs and protect the Plaintiffs from any acts of infringement committed for and by the Defendants in respect of the suit trade marks.

12. I therefore find a strong prima facie case in favour of the Plaintiffs in support of their Application for ex-parte ad-interim injunctive reliefs. The Plaintiffs being registered proprietors of the suit trademarks, any acts of infringement would irreparable and irretrievably prejudice their rights. As such, even the factors of balance of convenience and irrepar

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able injury would lie in their favour. 13. In such circumstances, I hereby grant an ex-parte ad-interim injunction in terms of prayer (a)(i) of the Notice of Motion, which is reproduced hereunder : "(a) Pending the hearing and final disposal of the above Suit, to pass a temporary injunction against the Defendants, directors, partners, distributors, stockists, marketers, servants, dealers, retailers, job workers, manufacturers, agents and/or any person acting through or under the Defendants and any companies wherein the Defendants are directors, shareholders and/or office bearers from : (i) in any manner (directly or indirectly) manufacturing, selling, exhibiting for sale, advertising, marketing or otherwise dealing in any products bearing the Suit trade marks, labels or any other mark deceptively similar to the suit Trade Marks (at Exhibit 'E' and 'G' to the Plaint) or any other mark similar thereto or in any other manner whatsoever or in any manner use the words Supermax, Zorrik, Vidyut, Samrat, Lady Max, Syrine Rise, Aquaglide, Dollar and Thames so as to infringe the Plaintiffs' respective rights as registered proprietor of the suit Trade Marks;" 14. This injunction shall remain valid upto and including 31st October 2018 and on which date the Notice of Motion shall be listed for consideration for the ad-interim reliefs. The Plaintiffs are directed to communicate copy of this order and serve the papers and proceedings on the Defendants on 29th October 2018, with notice that this Notice of Motion shall appear for ad-interim reliefs on 31st October 2018.
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