Delhi High Court: In a case wherein, a trade mark infringement suit was filed by the Plaintiff, Emerald Enterprises for grant of injunction and restraining the Defendant from using the mark ‘EMERALD VALVES’ or the trade name ‘EMERALD VALVES PRIVATE LTD’, Prathiba M. Singh, J., granted injunction to the Plaintiff and restrained the Defendant from using the mark ‘Emerald’ for valves or any other similar goods or services. The Court ordered Emerald Valves Pvt. Ltd to bring down its website ‘www.emeraldvalves.com‘ which was descriptively similar to ‘www.emeraldproducts.in‘.
Background
The Plaintiff was a partnership firm engaged in manufacturing valves, hot water generators, etc. The word mark ‘Emerald’ and the name ‘Emerald Enterprises’ with the ‘EE’ logo was stated to be registered with the Plaintiff since 1990. The Plaintiff also had a website registered with a domain name www.emeraldproducts.in to operate its business. The kind of valves, which were manufactured included butterfly valves, check valves, ball valves, water flow switches, automatic air vent valves, sluice valves, globe valves, air release valves, etc. The Defendant company was also engaged in the business of manufacturing and selling such as butterfly valve, globe valve, check valve, etc. and the Defendant had applied for the mark ‘EMERALD’ in 2022 and was later granted registration. The Defendant operate www.emeraldvalves.com.
The Plaintiff submitted that the Defendant was using the mark ‘EMERALD’ and the descriptively similar website www.emeraldvalves.com which caused confusion in the market. It was claimed that both the name and product were identical, which entailed the adoption to be of malafide in nature.
Comparison of Plaintiff’s and Defendant’s mark and domain name:
|
Plaintiff’s Marks |
Defendant’s Mark |
|
|
|
Decision
The Court noted that on google search of the mark/name ‘Emerald valves’, the Plaintiff was the first result, and the Defendant was the second result. The Court observed that the name was identical, the goods were identical, and the class of customers were identical. The Plaintiff was the long prior user of the mark, and the Defendant recently adopted the mark hence, Court opined that the mark ‘EMERALD’ was arbitrary and adoption was therefore malafide. The Court was satisfied to grant ex parte ad interim injunction against the Defendant and opined that irreparable loss would be caused to the Plaintiff if an injunction was not granted.
The Court relied on Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 where the Supreme Court observed that in case of passing off the Court shall grant an immediate ex parte injunction and appoint Local Commissioners to ensure that the infringing products were not permitted to be sold. The Court also relied on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 where the Supreme Court observed that if a prima facie dishonest intention to pass off one’s goods appeared then also interim injunction would be granted.
Thus, the Court opined that Plaintiff had made out a prima facie case for grant of interim injunction as Defendants were selling identical products i.e., valves under deceptively similar domain name and mark i.e., ‘www.emeraldvalves.com’ and ‘EMERALD VALVES’. The Court after considering that the Plaintiff group had been using the mark for more than 50 years and the Plaintiff itself had been using the name and mark ‘EMERALD’ since 1990, restrained the Defendant from using the trade mark and trade name ‘Emerald’ for valves or any other similar goods and services. The Court restrained fresh production or sale of the products under the mark ‘EMERALD’ and ordered the Defendant that its website www.emeraldvalves.com to be brought down.
The matter would next be listed on 04-03-2024.
[Emerald Enterprises v. Emerald Valves Pvt. Ltd., 2023 SCC OnLine Del 7553, Order dated 21-11-23]
Advocates who appeared in this case :
For the Plaintiff: Mr. Luv Virmani and Mr. Rohit Bohra, Advocates
