SU KAM POWER SYSTEMS LIMITED vs SUKAM NEXTGEN INDIA PRIVATE LIMITED & ORS.

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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision:22nd January, 2024
+ CS(COMM) 878/2022

SU KAM POWER SYSTEMS LIMITED ….. Plaintiff
Through: Ms. Tanvi Jain and Mr. Vaibhav Jairath, Advocates.

versus

SUKAM NEXTGEN INDIA PRIVATE LIMITED & ORS.
….. Defendants
Through: None.

CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA

JUDGMENT

SANJEEV NARULA, J. (Oral):

1. The Plaintiff has filed the instant suit seeking relief such as permanent injunction against the Defendants from infringement of its registered copyrights and trademarks, passing off and dilution; delivery up, rendition of accounts and damages, among other ancillary reliefs.
2. Plaintiff-company asserts that is a part of the renowned Sukam Group of companies, engaged in the manufacture and trade of inverters, solar power controllers, UPS, batteries and other power back-up solutions under its registered trademark “SU-KAM” [] (“Plaintiff’s Marks”) continuously and uninterruptedly, since 1998. Particulars of registration have been listed below:

Trademark
Date of Application
Registration No.
Class and Goods
Status

05/10/1998

821727
Class 9

Electrical apparatus & instruments – invertors, CVR – Constant Voltage Receiver, UPS Uninterrupted Power Supply

Registered

09/03/2006

1430351
Class 9

Electrical apparatus
& instruments –
invertors, CVR –
Constant Voltage
Receiver, UPS
Uninterrupted Power Supply

Registered

31/01/2012

2274722

Class 9

Inverter and battery

Registered

3. Plaintiff’s mark “SU-KAM” is a coined trademark. Plaintiff has invested substantial sums of money in promoting and advertising its products and services under the Plaintiffs Marks, and it has garnered significant goodwill as can be shown by the sales figures supplied by the Plaintiff. Plaintiff has developed a strong domestic as well as international presence, even winning several awards nationally and internationally, such as “Africa’s Most Reliable Inverter Brand”. Plaintiff has successfully defended its mark in previous instances before this Court, whereby permanent injunction/summary decrees have been granted against persons claiming to be associated with Plaintiff’s Marks1 and against similar marks such as “SU-MAK”.
4. Plaintiff is aggrieved with adoption of mark (“Impugned Mark”) by Defendant No. 1, which is submitted to be a slavish imitation of Plaintiff’s Marks likely to cause confusion to an average consumer with imperfect recollection. In October 2022, Plaintiff came across Defendant No. 1’s website www.sukam.co.in, whereby, upon investigation, it was found that on 24th March, 2022, Defendant No. 1 had registered the aforesaid domain name, which, though not operational, shows the following homepage when opened:

5. Copies of company master data available on the website of Ministry of Corporate Affairs and details of domain name registration have also been placed on record.2
6. Upon further investigation, it was found that Defendant No. 1 was advertising its products and offering for sale products with the Impugned Mark on Defendant No. 5’s (IndiaMART InterMESH Ltd.) website. It was observed identical/similar products were being offered for sale including solar cells, solar collectors and equipment/gadgets based on solar energy.
7. Further, the modification of the Wikipedia page of the Plaintiff to include details pertaining to the Defendant No. 1 raised strong apprehensions that the Defendant had undertaken this change themselves, underscoring their dishonest adoption. Plaintiff was shown to have been the predecessor and a subsidiary of Defendant No. 1, as can be seen in the extract supplied by the Plaintiff:

8. This Court has heard counsel for Plaintiff and perused the material on record. A comparison of Plaintiff’s Mark and Impugned Mark is as follows:
Plaintiff’s mark
Defendant’s mark

9. The above-noted marks are nearly identical, with notable differences being: (a) a hyphen, inasmuch as Plaintiff uses “SU-KAM” and Defendant uses “SUKAM”; (b) addition of phrase “Powered By NextGen” in a smaller font at the bottom and (c) utilisation of a darker shade of colour blue, however, the overall colour scheme of blue and white colour, remains the same. The adoption of the Impugned Mark by Defendant No. 1 as a part of its corporate/trade name appears to be a deliberate and dishonest adoption. They have attempted to free-ride on Plaintiff’s past reputation and goodwill, especially considering the sale of similar goods by Defendant No. 1. Defendant No. 1, by their use of Impugned Mark, are not only infringing and passing off Plaintiff’s Marks, but are also spreading false information online by misrepresenting themselves as a successor-in-interest of Plaintiff-company, as evidenced by the afore-extracted Wikipedia page wherein sales, achievements and accolades of Plaintiff are shown to have accrued to Defendant No. 1.
10. Further, Defendant No. 1 is offering identical products for sale under the Impugned Mark on Defendant No. 5’s website , which is an online B2B marketplace. It has also been argued that although Impugned Mark contains the symbol “®”, the same is not registered and thus, such use violates Section 107(1)(a) of the Trademarks Act, 1999.
11. Ms. Jain states that Plaintiff would be satisfied in case the Court were to award some nominal damages in addition to the relief of injunction.
12. Defendant No. 4 has already been deleted from the array of parties, as noted in order dated 12th May, 2023. Defendant No. 3 is the registrar of infringing domain name in the name of Defendant Nos. 1 and 2. No relief, except for implementation of the Court directions, is sought against them. Defendant Nos. 1 and 2 have not appeared despite service. They were proceeded ex-parte on 12th May, 2023. There is no written statement filed by Defendant Nos. 1 and 2 despite opportunity granted to them. Time period to file written statement and the overall condonable limit of 120 days has also expired. Defendant Nos. 1 and 2 do not have any defence to the present case. In the opinion of the Court, no purpose would be served by directing Plaintiff to lead ex-parte evidence as the pleadings and accompanying documents sufficiently prove that the Defendant Nos. 1 and 2 are misusing the Plaintiff’s Marks, entitling Plaintiff to protection. Therefore, the Court, in exercise of its power under Order VIII Rule 10 read with Order XIII-A Rule 3 of the Code of Civil Procedure, 1908, is inclined to decree the suit on the basis of pleadings and other material on record.
13. In view of the above discussion, the Court is of the view that use of Impugned Marks which are deceptively similar to Plaintiff’s Marks for sale of similar/identical goods has been done with an intention to unlawfully profit from and create unauthorised association with the goodwill of the Plaintiff. The case for likelihood of confusion and deception has been clearly made out, in the opinion of the Court. The use of Impugned Marks will lead to significant losses, harm and injury to the Plaintiff as well as to consumers at large. Since, there is no defence to the present suit and the facts narrated above clearly indicate that Defendants’ adoption of the Impugned Mark is clearly infringing Plaintiff’s Mark, the Court is satisfied that Plaintiff is entitled to a decree of permanent injunction as prayed for.
14. Accordingly, the suit is decreed in favour of Plaintiff and against Defendant Nos. 1 and 2 in terms of paragraph nos. 70(a)(permanent injunction against infringement of trademarks), (b)(permanent injunction against passing off) and (c)(permanent injunction against infringement of copyright) of the plaint. No relief of delivery up of the goods is being pressed. As regards prayer (g) (damages), in the opinion of the Court, the adoption of the Impugned Mark by Defendant Nos. 1 and 2 (Abhijeet Patel, Director), which is clearly infringing Plaintiff’s Mark, is sufficient for this Court to assume that intent of Defendant Nos. 1 and 2 is to ride upon Plaintiff’s reputation. However, in the instant case, Plaintiff had not sought appointment of Local Commissioner and there is no recovery of any infringing goods. Nonetheless, it is pointed out that Defendant Nos. 1 and 2 had listed out the products on IndiaMart’s website. In the fitness of things, in the opinion of the Court, it would be appropriate to award damages of INR 2 lakhs in favour of Plaintiff and against Defendant Nos. 1 and 2 in terms of paragraph 70(g) of the plaint. It is ordered accordingly.
15. Plaintiff is also entitled to actual costs, in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 (“Original Side Rules”) read with Delhi High Court (Intellectual Property Rights Division) Rules, 2022, recoverable from Defendant Nos. 1 and 2. Plaintiff shall file its bill of costs in terms of Rule 5 of Chapter XXIII of the Original Side Rules on or before 31st January 2024. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
16. The suit is decreed in favour of Plaintiff and against Defendant Nos. 1 and 2 in the above terms.
17. Decree Sheet be drawn up.
18. File be consigned to record room.

SANJEEV NARULA, J
JANUARY 22, 2024
d.negi
1 CS(COMM) 1155/2018
2 At page Nos. 352 and 354 of Plaintiff’s documents, respectively.
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