APL APOLLO TUBES LIMITED vs M/S STEEL TRACK & ORS.

$~27
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 1st April, 2024.
+ CS(COMM) 488/2023, I.A. 13246/2023
APL APOLLO TUBES LIMITED ….. Plaintiff
Through: Mr. Tushar A. John, Advocate.

versus

M/S STEEL TRACK & ORS. ….. Defendants
Through: Mr. Venkita Subramoniam, Advocate.

CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J. (Oral):
I.A. 13245/2023 (on behalf of Plaintiff under Order 39 Rule 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908)

1. The Plaintiff has filed the present suit to protect their trademark “APOLLO” and its formative versions including “APL APOLLO”, by seeking, inter-alia, permanent injunction restraining the Defendants from using the marks “APOLLO/APOLLO TMT/” on the ground of infringement and passing off.
2. Mr Tushar A. John, counsel for Plaintiff, submits as follows:
2.1. The Plaintiff, established in 1986, is the largest producer of steel pipes tubes, aluminized steel tubes, black steel tubes, hot dipped and pre galvanised steel tubes, fence tubes, and structural steel in India. Plaintiff is the registered proprietor of various trademarks including “APOLLO” and “APL APOLLO” [“Plaintiff’s Marks”] and uses these marks in relation to the above-mentioned goods.
2.2. The Plaintiff enjoys strong brand equity in the domestic markets. With almost four decades of experience in the steel pipes and tubes market, Plaintiff holds a strong reputation for high quality products and an extensive distribution network. Plaintiff’s products are also exported to over 20 countries. Furthermore, Plaintiff is credited with bringing new-age technology to India, details whereof are mentioned in paragraph no.7 of the plaint.
2.3. The Plaintiff has been operating its structural steel tubes and pipes business under its “APOLLO” marks since the year 1999, and has over the course of last 25 years secured numerous registrations, which includes significant number of registrations in Class 6, details whereof are as follows:

2.4. The Plaintiff has earned substantial revenue for its varied classes of products, under its mark “APOLLO” and its variants, over the years with revenue for the year 2021-22 being Rs. 13,063.32 Crores. The details of the expenses incurred by them for promoting their trademarks; and awards and accolades received, have been delineated in the plaint.
2.5. In view of the above, the Plaintiff has acquired formidable goodwill and reputation in the market, and their trademark “APOLLO” is distinctive of their goods on account of long, continuous and extensive use in marketing of the said mark.
2.6. Defendant No.1, M/s Steel Track, is a partnership firm engaged in the business of manufacturing, marketing and trading of ‘TMT steel bars’. Defendants No. 2- 8 are partners in said firm- Defendant No.1. Plaintiff’s grievance arises from the Defendants’ use of the marks “APOLLO/APOLLO TMT/ ” (“Impugned Marks”) in respect ‘TMT Steel Bars’.
2.7. In September 2019, the Plaintiff found out that ‘Hi Life Iron Metals India Private Limited’ (the Defendants’ erstwhile business entity), had applied for the registration of the mark on 16th January 2018, under TM application No. 3728713 in Class 6 for ‘TMT Metal Bar’, with a user claim since 19th December 2017. While the said application was opposed in September 2019, no major presence of the Defendants’ business under the Impugned Marks was found in the market for it to be of any cause of concern to the Plaintiff. As a result, no pressing need for undertaking a court action was felt. However, in May 2023, the Plaintiff’s fabricators, dealers, distributors, and clientele started enquiring from the Plaintiff, if they had forayed into the business of ‘TMT Steel Bars’ under another variation of its trademark “APOLLO”. This led to an investigation into the Defendants’ activities which also revealed that the Defendants were in the process of expanding their business and is running a website under the domain name www.apollotmt.com. Furthermore, the Defendants also launched a mobile application under the name ‘APOLLO TMT Parivaar’ and sell their products under the Impugned Marks on third party websites like, www.facebook.com, www.indiamart.com and www.steeloncall.com and Instagram.
2.8. Defendants’ device mark “” is deceptively similar to the Plaintiffs’ marks, and is likely to cause confusion amongst the consuming public, as the same is being used for similar goods.
3. Mr. Venkita Subramoniam, counsel for the Defendants, submits as follows:
3.1. The Defendants are using their device mark “” for different goods, although such goods may be falling in the same class i.e. Class No. 6.
3.2. The Plaintiff’s application bearing no. 4870896 for the mark ‘APL APOLLO MERA TMT BAR’ (Device mark) is still pending registration. The said application was filed on “proposed to be used” basis which indicates that the Plaintiff has not yet started manufacturing or trading ‘TMT Metal bars’. Therefore, there is no likelihood of any confusion. The Plaintiff was all throughout aware of the Defendants’ use of the Impugned Marks, and therefore there is a gross delay on the part of the Plaintiff in filing the present suit. This delay also demonstrates that the Plaintiff has acquiesced the Defendants’ use of the said mark.
3.3. Defendant No.1 is an honest and concurrent user as enumerated under Section 12 of Trademark Act, 1999 [“the Act”]. The Plaintiff, according to their own contention, is manufacturer of steel tubes, pipes etc., whereas the Defendants are in the business of manufacturing ‘TMT Metal Bar’. Therefore, as neither the goods nor the marks are identical, there is no scope of confusion as to the source of the goods or services. Moreover, the Plaintiff has not demonstrated any instance of actual confusion in the market and therefore, the contention of likelihood of confusion amongst the consumers is farfetched. This is further evident by the fact that the Defendants’ presence is largely in South India- exclusively in State of Kerela. In absence of any likelihood of confusion, no case of trademark infringement or passing off is made out.
3.4. The Plaintiffs have been using the expression “APL” along with the name “APOLLO”. In the Defendants’ device mark “”, there is no use of the expression “APL” and therefore, the two trademarks are distinguishable. Furthermore, Plaintiff’s trademark “APL APOLLO” is filed for ‘pipes and tubes’ in Class 6 and Defendant No.1’s trademark “” is filed for ‘TMT Metal Bar’ in Class 6. The product range for which the two marks are being utilised is different, which demonstrates that the competing products are distinct.
3.5. Since the Plaintiff does not have registration of the mark “APOLLO”, the question of trademark infringement does not arise at all. Therefore, the only case of the Plaintiff that merits consideration, is the passing off action. As per Section 134(2) of the Act the proper court for filing of the Suit for passing off action is the place where the cause of action arises. In the present case, Defendant No.1 is stationed in Kerala and the courts in Kerala alone have the jurisdiction to entertain the suit.

Analysis and findings
4. The Court has considered the aforenoted contentions. The present suit has been filed by the Plaintiff for infringement as well as for passing off. At the outset, it is held that this Court has the jurisdiction to entertain the present suit as the pleaded cause of action arose in New Delhi. The Plaintiff has averred in the plaint that the Defendants are indulging in infringing and passing off activities in Delhi. It is also averred that the Defendants are advertising, inviting enquiries, offering for sale and selling their goods bearing Impugned Marks, using its interactive website www.apollotmt.com, its official mobile application and on third party websites and social media channels such as www.indiamart.com, www.justdial.com, www.facebook.com, www.steeloncall.com and Instagram which are accessible by customers all over India including Delhi. It is settled law that an objection to the territorial jurisdiction of a court at the threshold stage, has to be decided on demurrer by accepting the statements made in the plaint to be true.1 Thus, the plea of lack of territorial jurisdiction cannot deny the Plaintiff, the relief of injunction.
5. The Plaintiff has been actively engaged in the structural steel tubes and pipes sector under the APOLLO brand since 1999. Over nearly a quarter-century, the Plaintiff has diligently accumulated a substantial portfolio of trademark registrations across India. These registrations encompass the wordmark “APOLLO”, “APL APOLLO”, and various other derivatives, spanning several relevant trademark classes. Notably, earliest registration in Class 6 dates back to the year 2000. This extensive collection of registrations prima facie proves the Plaintiff’s longstanding commitment to and association with the APOLLO trademarks within the industry. Some of the registrations for APOLLO based trademarks, in favour of the Plaintiff in class 6, have already been extracted in the previous section of the order.2 The Plaintiff has thus conclusively established statutory rights in the “APOLLO” trademark and its variants. These registrations, including those in Class 6, specifically cover structural steel tubes, pipes, and related products. This extensive portfolio of trademarks not only underscores Plaintiff’s claim to the mark “APOLLO” but also strengthens their legal standing in relation to the goods specified above. By virtue of the registrations and the provisions of the Trademarks Act, 1999, the Plaintiff has exclusive right to use the trademark “APOLLO”. However, in order to determine the infringement claim, the court must also discern whether a thread of similarity weaves together the trademarks at issue, blurring the lines of distinction or suggesting deceptive similarity or resemblance that has the potential to cause customer confusion.3 This evaluation hinges on analysis of the visual, structural, and phonetic similarities between the marks in question. Moreover, additional factors such as the class of users, the distinctive character of the registered trademark, the average consumer’s imperfect recollection, and the overall impression created by the mark are critical factor for determining similarity between the trademarks. Therefore, a detailed comparison of the competing marks is essential and is discussed in the following paragraphs.
6. The juxtaposition of the trademarks in question – “APOLLO” and “” unequivocally demonstrates that the Defendants have appropriated the core element of the Plaintiff’s well-established and registered mark “APOLLO”. Specifically, the term ‘APOLLO’ has been utilized in its entirety within the Defendants’ marks, thereby making their trademark deceptively similar. Defendants have merely added laudatory/ descriptive terms such as ‘TMT’, “STRONGER EVER” and “the image of Steel Bars” to the term ‘APOLLO’ to come up with the infringing mark. The Defendants’ device mark “” thus retains visual and phonetical similarities with the Plaintiff’s trademark. Such adoption by the Defendants risk misleading the consumer into associating the Defendants’ goods with the Plaintiff’s range of APOLLO-based products, including products bearing marks “APL APOLLO” and its variants. The market is prone to recognizing the Defendants’ TMT bars by the standout term in their mark—APOLLO—further blurring the lines of distinction. The incorporation of descriptive and commendatory phrases alongside “APOLLO” has the potential of suggesting to consumers that the Defendants’ products are related to or are a sub-variant of the Plaintiff’s products. Furthermore, the Defendants’ website www.apollotmt.com also incorporates the Plaintiff’s wordmark “APOLLO” as a whole and is deceptively similar to the Plaintiff’s website www.aplapollo.com. Accordingly, the Defendants’ mark and domain name bears a phonetic, visual, and structural resemblance to the most identifiable portion of the Plaintiff’s registered trademark— “APOLLO”.
7. The next issue that needs consideration is the identity/similarity between the Plaintiff’s goods i.e., steel pipes and tubes, aluminized steel tubes, black steel, tubes, hot dipped and pre-galvanised steel tubes, fence tubes, structural steel, hollow sections, Apollo TriCoat, Flat/ Oval Capsule Sections, Hand Rail, D-sections, Elliptical sections, narrow sections, taper section and the goods of the Defendants, i.e. TMT bars, steel angles, rounds, squares, and flats etc. To determine this issue, factors such as the nature and composition of the goods, their respective uses, and the channels through which they are marketed and sold are all pertinent. The Plaintiff currently does not manufacture TMT bars under the “APOLLO” trademark. However, the goods to which their current registered marks are applied are similar to the Defendants’ goods as they both are evidently engaged in ‘construction materials’. Thus, despite the Plaintiff’s lack of registration of the “APOLLO” marks for TMT bars, the Defendants’ use of the trademark is for allied and cognate goods i.e, steel-based products, including but not limited to TMT bars, steel angles, rounds, squares, and flats, etc, which places their goods within the same sector as the Plaintiff’s goods i.e, construction material. The Plaintiff further highlights the Defendants’ ambition to expand its range under the Impugned Marks, as evidenced by the Defendants’ website. This expansion isn’t limited to the variants of ‘TMT bars’ but extends to other steel products that directly compete with the Plaintiff’s standing, suggesting a comprehensive strategy to enter and compete in the steel industry under the Impugned Marks. Supporting this claim, a screenshot from the Defendants’ website (www.apollotmt.com) and a comparative analysis of the product offerings by both parties are presented, highlighting the overlapping identities in the goods offered by the Plaintiff and the Defendants:

8. Thus, in the Court’s prima facie view, there is a remarkable similarity between the goods offered by the Plaintiff and the Defendants. The competing goods, not only share physical characteristics and purposes but also their methods of application, positioning them as both competing and complementary products within the same industry. Furthermore, there is an undeniable overlap in the trade channels through which these products are marketed and sold, which has the potential for consumer confusion due to the similarity of the trademarks in use. This similarity extends to the likelihood of confusion or deception among consumers, particularly within the construction industry, where both steel pipes and TMT bars are considered allied and cognate goods. Clearly, given the common marketplaces and distribution channels, there is a real risk that consumers could be misled into believing that there exists an association or connection between the Defendants’ goods and the Plaintiff’s goods. This risk is compounded by the deceptive similarity between the trademarks.
9. Therefore, considering the comparative analysis of the trademarks and the nature of the goods they are applied to, a prima facie case of trademark infringement under Section 29(2)(b) of the Act has indeed been established.
10. We shall now proceed to examine if an action of passing off is made out. The substantial revenue generated by the Plaintiff underscores their significant goodwill and market reputation. Over nearly a quarter-century, the Plaintiff has invested considerably in widespread advertising and promotional efforts to embed its ‘APOLLO’ trademarks in the consumer consciousness and throughout the trade channels. The Plaintiff has deployed extensive marketing strategies through various print media—newspapers, magazines, trade journals, leaflets, and promotional materials—across India, in multiple regional languages such as Marathi, Gujarati, Hindi, Bengali, Kannada, and Malayalam. Furthermore, the documentary evidence submitted by the Plaintiff prima facie establishes their reputation in the market, supporting their claim of established goodwill. Given this backdrop, the Defendants’ use of similar or identical marks poses a tangible risk of misleading the public, potentially inducing false associations between the Plaintiff’s and Defendants’ goods where no such connection exists.
11. Furthermore, the word “APOLLO” originates from the name of the Greek God, APOLLO, and is used to refer a large butterfly (Parnassius apollo) which has creamy white wings marked with black and red spots.4 Thus, the goods with respect to which the Plaintiff is using its ‘APOLLO’ marks has no relation to the literal meaning of the term, as defined above, thereby making Plaintiff’s use of such term arbitrary. Considering this and the fact that the Plaintiff’s registrations for its “APOLLO” marks in class 6 predates the Defendants’ use/ adoption of the Impugned Marks for goods falling within the same class, a critical question then emerges regarding the Defendants’ motives behind incorporating the identical word “APOLLO” into their own trademark. The absence of a credible justification for this choice, leads to the presumption that the Defendants’ aim was to exploit the Plaintiff’s established reputation. In a prima facie assessment, it appears that the Defendants’ use of the word “APOLLO” was strategically intended to mislead consumers into believing they are purchasing the Plaintiff’s products, thereby sowing confusion among unsuspecting buyers. This deliberate act of imitation suggests an underlying intention to unjustly profit from the established goodwill associated with the Plaintiff’s trademarks. Such action by the Defendants, not only infringes upon the Plaintiff’s proprietary rights in the mark “APOLLO”, but also amount to a clear case of passing off.
12. The other point of consideration in this case is the delay in bringing forth the lawsuit, especially given the Plaintiff’s knowledge of the Defendants’ use of the contested marks which dated back to 2017. While such a delay might raise questions, it is crucial to understand that this delay, by itself, does not undermine the Plaintiff’s claim. Legal precedents hold that mere delay does not equate to acquiescence and for acquiescence to be a valid defense, there must be incontrovertible evidence that the Plaintiff not only knew about the Defendants’ usage of the marks, but also actively encouraged or endorsed such use, thereby leading the Defendants to reasonably believe that their actions were permissible.5 In the absence of such positive encouragement or explicit consent from the Plaintiff, the passage of time before instituting legal proceedings does not automatically disqualify the Plaintiff from asserting their rights. The courts have consistently held that for acquiescence to diminish a trademark claim, there must be a demonstrable impact on the Defendants’ position due to the Plaintiff’s inaction—specifically, that the Plaintiff’s delay led the Defendant to continue or expand the use of the contested marks under a good faith belief of legality.6 Given these legal principles, the Court concludes that the delay in filing does not preclude the Plaintiff from pursuing remedies for the infringement of their statutory trademark rights. This lawsuit, therefore, remains a legitimate action for the Plaintiff to address and rectify the unauthorized use of their trademarks by the Defendant, aiming to protect their brand integrity and market position.
13. In light of the above, the Court finds that Plaintiff has made out a prima facie case in their favour and in case no ad-interim injunction is granted Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants. If Defendants are permitted to sell products under the Impugned Marks, it is likely to cause irreparable damage and injury to Plaintiff’s business and reputation.
Directions
14. It is directed that during the pendency of the suit, Defendants or anybody acting on their behalf, are restrained from directly or indirectly using the Impugned Marks “APOLLO/APOLLO TMT/” or any other mark which is identical or deceptively similar to the Plaintiff’s marks, in any manner, including but not limited to marketing, manufacturing, and/or selling, offering for sale, advertising, distributing or in any other manner trading or dealing in any goods or services by using the said trade mark, promoting on the internet through any website including as part of its domain name www.apollotmt.com or social media channels such as Instagram and Facebook or for its mobile application i.e. APOLLO TMT Parivaar or on third party trade and/or listing websites such as www.indiamart.com, www.justdial.com, and www.steeloncall.com or physical store/locations or by any other mode or manner, amounting to passing off and trademark infringement.
15. However, considering the delay by the Plaintiff in initiating the present suit, the Court hereby directs that this injunction order shall not extend to goods that have already been manufactured and packaged as of today. The Defendants shall submit an affidavit detailing the specifics of the goods manufactured up to this point, including the batch numbers.
16. With the above directions, the present application is disposed of.
CS(COMM) 488/2023
17. List before the Joint Registrar for completion of pleadings on 20th May, 2024.

SANJEEV NARULA, J
APRIL 1, 2024/nk
1 Dassault Systemes S.E. and Anr V Automobile Corporation of Goa Limited and Ors 2022: DHC:4229-DB
2 Paragraph No. 2.5
3 Parle Products (P) Ltd. v. JP Co. Mysore 1972 AIR 1359

4 Shorter Oxford English Dictionary, edited by Lesley Brown, 6th Edition, vol 1, Oxford University Press.
5 See: M/s Power Control Appliances & Ors v. Sumeet Machines Pvt Ltd, 1994 (2) SCC 448

6 M/s Power Control Appliances & Ors (Supra)
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