KSB Properties Private Limited vs KSB Aktiengesellschaft and Another

Mrinal Kanti Sinha, J.—This is an appeal by the defendant/appellant challenging judgment and order dated July 19, 2010 passed by the learned Additional District Judge, Fifteenth Court at Alipore, District; South 24-Parganas in Title Suit No. 487 of 2010. By the order impugned, the learned trial judge allowed an application for temporary injunction filed under Order 39, rules 1 and 2 read with section 151 of the CPC filed by the plaintiffs.

The defendant/appellant was restrained by an order of injunction from using the letters ''KSB'' with their corporate name or in connection with their trade and business till the disposal of the suit.

This appeal arises out of a suit for perpetual injunction, mandatory injunction alongwith other reliefs. The suit has been registered as Title Suit No. 487 of 2010 and the same is, now, pending before the learned Additional District Judge, Fifteenth Court at Alipore, District: South 24-Parganas.

In the said suit, the plaintiffs filed an application for temporary injunction, as aforesaid, to restrain the defendant, their men and agents and any other person claiming through them from using the letters ''KSB'' or any other deceptively similar letters as a part of the corporate name of the defendant in any manner whatsoever.

The plaintiffs in support of their prayers contended as under:

(a) The plaintiff No. 1, namely, KSB AKTIENGESELLSCHAFT, is a company incorporated and/or existing under the laws of the Federal Republic of Germany. At all material times, the letters ''KSB'' formed and continue to form an integral and essential part of the corporate name of the plaintiff No. 1. The plaintiff No. 1 has, also, obtained registration of the letters ''KSB'' as its trademark and logo in various countries all over the world. The trademark/trade name ''KSB'' has been coined by using the first letters of the respective surnames of its three founders, namely, Johannes Klien, Friedrich Schanzlin and Jakob Becker.

(b) The trademark/trade name ''KSB'' was adopted in the year 1887. The plaintiff No. 1 is known as ''KSB'' in Germany for more than 130 years. Many companies have been formed and/or promoted by the plaintiff No. 1 its associates all over the world having the letters ''KSB'' as part of their corporate names. The plaintiff No. 1 has 27 (twenty seven) manufacturing units worldwide with subsidiaries and representatives in over 100 (one hundred) countries.

(c) The plaintiff No. 2, namely. KSB Pumps Limited, was incorporated on April 11, 1960. The plaintiff no. 1 holds 40.54% shares in the plaintiff No. 2 through its subsidiary and, also, issued no objection for its incorporation as KSB Pumps Private Limited. The said plaintiff No. 2, subsequently, became a public limited company in March 1961. The plaintiff No. 2 is an associate of the plaintiff No. 1 and is a permitted user of the trademarks owned by the plaintiff No. 1 in India.

(d) The plaintiffs have been using trademark ''KSB'' continuously and uninterruptedly for a long time.

(e) The plaintiff No. 1 has been the leading manufacturers and dealers of a variety of pumps, valves and spare parts and providing allied services since 1887 under the trademark ''KSB'', By reason of such long user the letters ''KSB'' have become distinctive with the goods and services or the plaintiffs. The plaintiff No. 1 has imported into India their products bearing the trademark ''KSB''. ''KSB'' has acquired worldwide reputation and has been a well-known trademark to the people of India at least since 1960.

(f) The plaintiffs have been carrying on business extensively in India and, also, all over the world. The plaintiffs have been incurred substantial expenses through advertising, their product. The plaintiff No. 1 has large number of affiliated and associated enterprises all over the world.

(g) The plaintiff No. 1 has, also, obtained registration of its trademarks ''KSB'' in India in respect of goods and services falling under various classes.

(h) the trademark ''KSB'' has been promoted by the plaintiff No. 1 worldwide by making huge financial investments over the past several decades and has acquired worldwide goodwill and reputation. The trademark ''KSB'' is, also, a well-known trademark in India on account of long and exclusive usage of premium quality goods and parts and exclusive services. The trademark/trade name ''KSB'' has come to be exclusively associated with the plaintiffs by the members of the trade and public.

(i) The plaintiffs have been vigilant about protection of their intellectual property rights. The plaintiffs have taken actions against several parties and obtained orders from various courts restraining such parties from using ''KSB'' in their corporate name/trade name or on their goods or services. Pursuant to Cease and desist notices issued and legal proceedings initiated by the plaintiffs various companies have changed their corporate names by deleting the words ''KSB''. These companies that have changed their names by deleting ''KSB'' have diverse fields of activity including real estate, construction, etc.

(j) The plaintiffs came to know that appellant/defendant had been incorporated with the name KSB Properties Private Limited. The plaintiffs issued cease and desist notice in October 2006. but the appellant/defendant refused to comply with the requisitions in the said notice. Hence the present suit.

(k) The objects of the defendant company are similar and/or overlapping with the objects of plaintiff No. 2 and one KSB Technical Private Limited, which is a 100% subsidiary company of the plaintiff No. 1.

The defendant: contested the said application for injunction by filing a written objection. The defendant contended as under:

(a) The defendant company was incorporated on or about January 2, 1995. One Samir Bose and his wife, Shrimati Surabhi Bose, are the founder-promoter directors of the defendant company.

(b) The only child of the said promoter directors of the defendant company, namely, Kabir Shankar Bose, was born on November 4, 1983. The initials of the only child of the said promoter directors of the defendant company are naturally ''KSB''. As such the promoter directors of the defendant company incorporated the defendant company with the name ''KSB Properties Private Limited''. The adoption of such name of the defendant company did not and could not have any reference either directly or indirectly with the name of the plaintiffs.

(c) As such the said name and/or mark, that is, ''KSB'' was coined and adopted on January 2, 1995 with reference to the name of the said Kabir Shankar Bose.

(d) The main objects of the defendant company are to purchase, sell and develop real or personal estate. The plaintiffs and the defendant are operating and functioning in different lines of business.

(e) The defendant company has used and maintained the said name as such from January 2, 1995 and the adoption and use of the said name is bona fide and honest.

(f) The adoption and use of the said mark and name by the defendant company is indisputably in accordance with honest practices in industrial and commercial matters and is not such as to take any unfair advantage over any other''s mark or name.

(g) By a notice dated October 27, 2006 the plaintiffs had caused a demand to be made that the defendant company ceased and desisted from using the said mark ''KSB'' as part of the trade name of the defendant company. This purported notice was duly replied to and refuted.

(h) Moreover, the entire area and scope of the business of the defendant company is diametrically different from the business of the plaintiffs. The defendant company, also, has never used such mark name in connection with business of manufacturing and selling industrial pumps.

(i) In any event, the mark ''KSB'' is not a household mark or a well-known mark.

(j) The plaintiff No. 2 filed an application u/s 22 of the Companies Act, 1956, seeking rectification of the name of the defendant company, This application was rejected by an order dated March 10, 2008. The plaintiff No. 2 challenged such order by way of a writ petition before this Court, which was registered as W.P. No. 13236 (w) of 2008. By the judgment and order dated August 6, 2009, this Court dismissed the said writ petition, inter alia, on the ground that the plaintiff No. 2 did not have any right to make any application u/s 22 of the Companies Act, 1956, However, this Court observed that such order of dismissal would not prevent the plaintiff No. 2 from filing appropriate proceedings.

As we have indicated hereinabove, the learned trial judge, by the order impugned, allowed the said application for temporary injunction and restrained the defendant and their men and agents from using the letters ''KSB'' with their corporate name or in connection with their trade and business till the disposal of the suit.

Mr. Kalyan Bandopadhyay, learned senior advocate appearing on behalf of the defendant/appellant, argues that the learned trial judge exceeded his jurisdiction in passing the order of injunction as the learned judge applied wrong legal tests in considering the said application for temporary injunction. Mr. Bandopadhyay submits that the learned judge held the issues involved in the proceedings could not be decided at the stage of consideration of the application for temporary injunction and, therefore, the learned judge ought not to have passed the order of temporary injunction.

Mr. Bandopadhyay, further, submits that lines of businesses of the plaintiffs and the defendants are different. The defendant company never used the mark ''KSB'' in relation to manufacturing and selling of industrial pumps. The interest of the defendant company is development of real estate. The plaintiffs are in no way concerned about the development of real estate. The letters ''KSB'' were adopted by the defendant as the name of the son of the promoters of the defendant company is Kabir Shankar Bose. It is submitted that there is no use of the letters ''KSB'' either any goods or services other than the registered corporate name of the defendant company. The defendant company has been registered as KSB Properties Private Limited u/s 22 of the Companies Act, 1956. Finally, Mr. Bandopadhyay submits that the alleged infringement, if any, comes within the fold of section 29(4) of the Trademarks Act, 1999. Hence, in presence of special provision of section 29(4). there is no application of section 29(5) of the said Act of 1999 in the facts and circumstances of the case.

Mr. Bandopadhyay in support of his contention relied upon the decisions in the cases of String fellow & Anr. v. McCain Foods (C.B.) Limited & Anr. reported in (1984) R.P.C. 501, Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Company Limited reported in 1996 PTC (16) 512, Raymond Limited Vs. Raymond Pharmaceuticals Pvt. Ltd.,

Mr. Jayanta Mitra, learned Senior Advocate appearing on behalf of the respondents, however, supports the order of the learned trial judge. He submits that the term ''KSB'' is so well-known that the defendant cannot be permitted to use the said expression ''KSB'' as the use will, certainly, cause confusion. He submits that the provisions of section 29 of the Trademarks Act, 1999 are to be read as a whole.

Mr. Mitra relies upon the decision in the cases of Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills, and KSB Aktiengesellschaft and Ors Vs. KSB Global Limited,

The Court held that String fellow was only a coined name and not a common name. Therefore, the decision in String fellow (supra) has no application in the facts and circumstances of the case inasmuch as ''KSB'' in our, prima facie, view, is a coined name and has acquired distinctive meaning.

In Vishnudas trading (supra) the Court did not decide any issue regarding infringement or passing off by adoption of a distinctive trade name/mark. The Court did not express any opinion as to the claim of registration of the trademark ''CHARMINAR''.

Raymond Limited (supra) was cited to show that the case comes within the scope of sub-section (5) of section 29 of the Trademarks Act, 1999 and since the goods and/or services are not the same, there is no infringement.

Prima facie, we are of the opinion that the plaintiffs have established all the ingredients of infringement within the four corners of section 29 of the said Act of 1999. Moreover, the common law is a greater right that cannot be affected by Sub-section (5) of section 29 of the said Act of 1999.

In Sony Kabushiki Kaisha (supra) a Full Bench of this Court had taken the view that even if goods and/or services of rival traders were different, it would not eliminate the possibility of confusion specially so in case of distinctive trademarks or trade name.

The Delhi High Court in KSB Aktiengesellschaft (supra), almost in similar circumstances, rejected the contention of the defendant of the said case and restrained the defendant of the said case from using the expression ''KSB'' as part of its corporate name.

The trademarks/trade name ''KSB'' has been coined in the year 1887. The plaintiff company is operating for more than 130 years. It had formed many companies all over the world and using the letters ''KSB'' as part of their corporate name. The plaintiff No. 1 has 27 (twenty seven) manufacturing units worldwide with subsidiaries and representatives in over 100 (one hundred) countries. The plaintiff No. 2 was incorporated on April 11, 1960. The plaintiff No. 1 holds substantial shares in plaintiff No. 2 through its subsidiaries. The plaintiff No. 2 became a public limited company in March 1961. The plaintiff No. 1 has also, obtained registration of its trademark in ''KSB'' in India in respect of goods and/or services falling under various classes. The plaintiffs have been vigilant about protections about their intellectual property right inasmuch as we have noticed that the plaintiffs initiated several cases to prevent the others from using the mark ''KSB''.

Prima facie, the objects of the defendant company are overlapping with the objects of the plaintiff No. 2 and KSB Technical Private Limited, which is 100% subsidiary company of the plaintiff No. 1.

It is settled law that grant or refusal of temporary injunction is covered by well established principles, that is, whether the petitioner has made out a prima facie case, whether the balance of convenience is in favour of the petitioner and whether the petitioner would suffer irreparable loss and injury. While the first condition is sine qua non, the petitioner is, also, to establish two other conditions conjunctively.

In view of the fact that the plaintiff No. 1 is operating for last 130 years with the coined trade name/mark ''KSB'', trade name/mark ''KSB'' is, also, registered in India in favour of the plaintiff No. 1 in respect of various goods and/or services falling under various classes and as the objects of the defendant company are overlapping with the objects of the plaintiff No. 2 and its wholly own subsidiary company, that is. KSB Technical Private Limited, we are of the opinion that the learned judge in the Trial Court did not err in law and in the facts and circumstances of the case in passing the order of temporary injunction.

The order of injunction is discretionary and it is essential for the party operating against such discretionary order to establish that the Court, against whose judgment appeal is preferred, acted in the exercise of its discretion wrongly in granting temporary injunction in the facts and circumstances of this case.

We are of the opinion that the defendant has failed to establish that the Court below acted in the exercise of its discretion erroneously.

The appeal is, therefore, dismissed.

The order impugned is affirmed.

All interim orders are vacated.

In view of dismissal of the appeal, connected application filed under C.A.N. 7823 of 2010 becomes infructuous and is, thus, dismissed.

We, however, hasten to add that we have not finally decided the issues in the suit. All our observations are limited for the purpose of disposal of the application for temporary injunction filed in the suit. The learned Trial Judge shall decide the issues involved in the suit independently and uninfluenced by our observations made in this order. Let the hearing of the suit be expedited as far as possible. There will be no order as to costs.

Urgent photostat certified copy of this judgment, if applied for, be given to the learned Advocates for the parties upon compliance of all requisite formalities.

Subhro Kamal Mukherjee, J.

I agree.