Ube Industries Limited & Anr vs. S. Vijaya Bhaskar & Ors

$~17
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Date of decision: 4 October, 2024
+ CS(COMM) 807/2017, I.A. 5353/2018 & I.A. 11341/2018
UBE INDUSTRIES LIMITED & ANR. .....Plaintiffs
Through: Mr. Prithvi Singh, Mr. Prithvi Gulati
and Mr. Ritwik Marwaha, Advs.
M: 9999845680, 8802958896
Email:
litigation@fiduslawchambers.com

versus

S. VIJAYA BHASKAR & ORS. .....Defendants
Through: None.

CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)


I.A. 11341/2018 (Application under Order XIII-A read with Rule 2 of
Code of Civil Procedure, 1908 (“CPC”) read with Section 151 of the
CPC.

1. The present application has been filed on behalf of the plaintiffs
seeking a summary judgment under Order XIII-A, Rule 2 read with Section
151 of CPC in the present suit bearing CS (COMM) No. 807/2017 , which
has been filed against the defendants for, inter alia , seeking permanent
injunction restraining infringement of its trademark, passing off, damages,
rendition of accounts, and delivery up.
2. The case as set up by the plaintiffs in the plaint is as follows:
Signature Not Verified
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Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 1 of 20

2.1 The plaintiff no. 1 company was incorporated in 1942 by
amalgamation of four pre-existing Ube entities – Ube Nitrogen Industry Ltd,
Ube Cement Production Ltd, Ube Shinkawa Iron Works, and Ube Mining -
the last of which commenced business as far back as 1897.
2.2 Plaintiff no. 2 is plaintiff no. 1‟s wholly owned subsidiary in India and
is a company which was incorporated in 2012 under the Companies Act,
1956.
2.3 The plaintiffs have been carrying on business in India under the
trademark UBE for over 45 years. Its activities include developing a wide
range of advanced business solutions and by manufacturing a large variety
of state-of-the-art products in fields such as chemicals and plastics, specialty
chemicals and products, pharmaceuticals, cement and construction
materials, machinery and metal products, energy, and environment.
2.4 The plaintiffs are the registered proprietor in India of a number of
trademarks using „UBE‟ and „UBE Industries‟ since 1973. By virtue of its
long standing and widespread business and use, the plaintiffs‟ trademarks
„UBE‟ and „UBE Industries‟ are „well-known‟ marks and have distinctive
reputation in India.
2.5 In connection with its services, the plaintiff no. 1 also owns and
operates the websites www.ube-ind.co.jp and www.ube.co.in . The domains
associated with these websites were registered as far back as 1996.
2.6 A number of publications/ directories both of foreign and Indian
origin having circulation in India have written about the plaintiff or have
listed the plaintiff company.
2.7 In the month of October 2016, plaintiff no. 2 received a copy of a
letter from defendant no. 1 on behalf of defendant no. 2 addressed to The
Signature Not Verified
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Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 2 of 20

Registrar of Companies, Delhi and Haryana, seeking rectification of the
plaintiff no. 2's company name, without disclosing any reasons for such
rectification. Pertinently, defendant no. 2 changed its own name in 1996 to
incorporate the word „UBE‟ in it.
2.8 Pursuant to the defendant‟s letter, the plaintiffs started ascertaining
the details about the defendants through various modes on the internet and
conducted an on-site investigation, which revealed that the defendant no. 1
had incorporated defendant nos. 2 to 6, but was not conducting any business
under any of the said companies.
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2.9 Plaintiff no. 2 was then served a notice on 2 November, 2017 to
appear before the Regional Director (Northern Region), Ministry of
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Corporate Affairs, New Delhi on 30 November, 2017 for the said matter.
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2.10 Plaintiffs accordingly sent a legal notice dated 7 November, 2017 to
defendant no. 1 to put the defendants on notice on their rights in the
trademarks UBE to which the plaintiffs did not receive any reply.
2.11 The defendants are using the plaintiffs‟ „UBE‟ trademark, with the
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earliest document being a provisional SSI Registration Certificate of 30
September, 1988 to support their use as a trade name, which is subsequent to
the plaintiffs‟ use and registration of the mark UBE.
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2.12 A copy of the Invoice dated 20 January, 1972 issued for UBE
branded Coprolactumin India has been filed along with the present suit
which demonstrates the use of the trademark UBE since at least 1972 in
India in respect of plaintiffs‟ products.
2.13 Defendants filed their updated annual returns and disclosed their
turnover. From the annual returns of 2016-17, it appears that defendant no.
2's turnover for the financial year is only Rs. 5,47,283/-. Therefore, no bona
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 3 of 20

fide business operations are being carried out by the defendants for them to
successfully claim any relief in equity.
2.14 Being aggrieved by the adoption by the defendants of the registered
trademark of the plaintiffs and the registration of the domain
www.ubeindia.com and www.ubeindustries.com amounting to infringement
and passing off, the present suit has come to be filed.
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3. This Court vide order dated 23 November, 2017, granted an ex parte
ad interim injunction in favour of the plaintiffs, thereby restraining the
defendants from using the plaintiffs‟ registered trademark UBE in any
manner including manufacturing, selling, offering for sale, advertising,
directly or indirectly dealing in goods and/or services bearing the plaintiffs‟
registered trademark UBE, which injunction order was confirmed vide order
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dated 03 April, 2018.
4. Aggrieved by the said order, the defendants filed an appeal being
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FAO (OS) (COMM) 92/2018 , which was disposed vide order dated 18 May
2018, wherein, the said injunction was consensually modified to the effect
that the defendants were directed to incorporate a disclaimer that they are in
no way related to the plaintiffs.
5. The plaintiffs have filed the present application, being I.A.
11341/2018 , in the aforesaid suit seeking summary judgment under Order
XIII-A read with Rule 2 of CPC, against the defendants.
6. Learned counsel appearing for the plaintiffs has made detailed
submissions before this Court and has relied upon various judgments to
submit that the defendants have failed to put up a credible defence and
hence, the present suit ought to be heard and decided under the summary
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Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 4 of 20

procedure as prescribed under Order XIII-A CPC, without the necessity of a
full trial.
7. On the other hand, the defendants in their reply to the aforesaid
application, have contended that the defendant no.1 is the prior user of the
name UBE having used the same since 1988. The defendant no. 1 coined the
name UBE from the acronym of Udaya Bharathi Enterprises, which was the
entity established by the defendant no. 1 in 1981. The said name UBE has
been continuously used by the defendant no. 1 as part of the trade name of
his entities/companies since 1988.
8. It has been further submitted that the business of the plaintiffs is
completely different to the business of the defendants who are engaged in
the Design, Manufacture, Commissioning and Installation of special purpose
machine tools and Tooling Systems (Jigs & Fixtures) and Manufacturing of
Welding Consumables and Welding Equipment & Machineries. Therefore,
goods/services provided by the defendants are dissimilar to those provided
by the plaintiffs and hence, there can be no likelihood of confusion. Trade
channels are different and the consumers are sophisticated which eliminates
the possibility of confusion with regard to the source of products/goods.
9. I have heard learned counsel for the plaintiffs and have perused the
record.
10. At the outset, this court notes that notice in I.A. 11341/2018 was
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issued by the court on 21 February 2023. Further, on the very same date,
counsel appearing on behalf of the defendants had sought for and was
granted discharge from appearing in the present suit. Subsequently, some
other counsel appeared on behalf of the defendants, and presence of the said
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counsel is recorded in the order dated 16 August, 2023, 31 October, 2023
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Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 5 of 20

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and 19 January, 2024. After 19 January, 2024, there has been no
appearance on behalf of the defendants, despite the matter being taken up for
hearing on several dates.
11. This court notes that the plaintiff no. 1, being the registered proprietor
of the trademark UBE in India has been carrying on business under the said
trademark for more than 50 years.
12. The plaintiffs are the registered proprietors of a number of trademarks
using „UBE‟ and „UBE Industries‟ since 1973 in India, the details of which,
as given in the plaint, are reproduced as under:


13. It is to be noted that various publications of both foreign and Indian
origin having circulation in India have listed the plaintiff company, which
shows that public/consumers in India have been aware of the plaintiffs and
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 6 of 20

the plaintiffs‟ trademark UBE for nearly five decades. Relevant extracts of
the said publications, are as under:

Signature Not Verified
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By:AMAN UNIYAL
Signing Date:23.10.2024
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Signature Not Verified
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Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 8 of 20

14. The relevant extracts of the sales figure of the plaintiffs in India, are
as under:
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Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 9 of 20

15. It is to be noted that the defendants have claimed prior use of the
acronym UBE as a tradename in India since 1988. However, this assertion is
clearly contradicted by the evidence, which shows that the plaintiffs have
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:23.10.2024
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used the trademark UBE in India since at least 1972. The invoice of January,
1972 filed by the plaintiffs, as available on record, is reproduced hereunder:



16. Similarly, registration certificate for the mark and device UBE
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showing registration date as 12 November, 1973 and certificate date as 23
March, 1977, as placed on record, is reproduced as under:
Signature Not Verified
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By:AMAN UNIYAL
Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 11 of 20

Signature Not Verified
Digitally Signed
By:AMAN UNIYAL
Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 12 of 20

17. The aforesaid documents clearly establish the prior user of the mark
in question by the plaintiffs.
18. This court further notes that the defendants have placed on record, a
document supporting their use of their trade name, which is only a
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provisional Small Scale Industries (“SSI”) Registration Certificate of 30
September, 1988, which is subsequent to the plaintiffs‟ use and registration
of the mark UBE.
19. Perusal of the documentary evidence filed by both parties, shows that
the plaintiffs have been using the trademark UBE continuously and
uninterruptedly since 1972, whereas, on the other hand, the defendant is
only a subsequent user. There is no document on record to support the claim
of the defendants, of use of the trademark/ tradename UBE that establishes a
prior right over the plaintiffs.
20. It is also to be noted that the defendants have admitted to actual
confusion on account of business enquiries from potential consumers of the
plaintiffs to them. In this regard, reference may be made to the letter dated
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6 October, 2016 written by the defendant company to the Registrar of
Companies, wherein, they have stated in clear terms that they received some
enquiries whether the defendant company and the plaintiff company, are
one. Thus, a clear case of passing off by the defendants stands admitted and
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proved. The letter dated 6 October, 2016, is reproduced as under:
Signature Not Verified
Digitally Signed
By:AMAN UNIYAL
Signing Date:23.10.2024
21:06:14
CS(COMM) 807/2017 Page 13 of 20

21. While holding that a subsequent user cannot claim to generate
goodwill in the market by misrepresenting their own business as that of the
prior user‟s, this court in the case of KBM Foods Pvt. Ltd. v. Sachin Gupta,
2021 SCC OnLine Del 2771 , has held as under :

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Signing Date:23.10.2024
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“ xxx xxx xxx
49. Having heard the learned counsel for the parties and perused
the record, the issue which arises for consideration in this application
is whether the plaintiff is entitled to injunction against the defendant
from manufacturing, marketing, selling, offering for sale the goods,
i.e., spices by using the mark „GAI CHAAP‟ with „COW‟ device and
other essential features of the label and trade dress of the plaintiff's
mark „KBM‟, „GAI CHAAP‟ with „COW‟ device. In support of its case
that it is the prior user of the „GAI CHAAP‟ with „COW‟ device, the
plaintiff has relied upon various documents. Suffice to state, this Court
in CS(COMM) 51/2018 filed by the plaintiff against one Subhash
Tayal and Anr., has held that plaintiff has been using the mark „GAI
CHAAP‟ with „COW‟ device for spices since 2004. So, proceeding on
that premise and it is the case of defendant herein that he is using the
mark „GCMC‟ with cow device since 2017, it is clear that the plaintiff
is the prior user of the „COW‟ device in relation to spices and as a
prior user, certain rights flow in favour of the plaintiff. I may state
here that it is the case of the plaintiff that it has registration in the
mark since 1969, through its predecessor-in-interest. In any case, the
plaintiff's case is also that it got the mark registered, through
application No. 2802285 in the year 2013, which is also before 2017.
The Supreme Court in the case of S. Syed Mohiden (supra) relied
upon by Mr. Bakhru has in Para 31.2 held as under:
“31.2. The applicability of the said principle can be seen as
to which proprietor has generated the goodwill by way of use of
the mark/name in the business. The use of the mark/carrying on
business under the name confers the rights in favour of the
person and generates goodwill in the market. Accordingly, the
latter user of the mark/name or in the business cannot
misrepresent his business as that of business of the prior right
holder. That is the reason why essentially the prior user is
considered to be superior than that of any other rights.
Consequently, the examination of rights in common law which
are based on goodwill, misrepresentation and damage are
independent to that of registered rights. The mere fact that both
prior user and subsequent user are registered proprietors are
irrelevant for the purposes of examining who generated the
goodwill first in the market and whether the latter user is
causing misrepresentation in the course of trade and damaging
the goodwill and reputation of the prior right holder/former
user. That is the additional reasoning that the statutory rights
must pave the way for common law rights of passing off.”
Signature Not Verified
Digitally Signed
By:AMAN UNIYAL
Signing Date:23.10.2024
21:06:14
CS(COMM) 807/2017 Page 15 of 20

50. So, from the above ratio it must be held that prior user
generates goodwill first in the market and later user cannot
misrepresent his business as that of the prior user/holder. Therefore,
any goodwill generated by the defendant is because of the dishonest
adoption of the impugned mark which is subsequent to the plaintiff's
adoption of the said mark. Mr. Bakhru is also justified in relying
upon the judgments on similar proposition, in the case of N.R.
Dongre (supra), Eicher Goodearth Pvt. Ltd. (supra), Century
Traders (supra), Ropi Industries (supra). So also, a Coordinate Bench
of this Court in the case of AZ Tech (India) v. Intex Technologies
(India) Ltd., (2017) 70 PTC 118 (Del.) has held that in order to
succeed in a case of passing of, the plaintiff must establish prior rights
over the defendants (in that case) and went on to hold as under:
“77…… it is clear that in an action of passing off, prior user
remains the ultimate test. This is subject to one exception being
that a mere casual, intermittent or experimental use may be
insufficient to sustain an action of passing off. This is so as the
intention to adopt the mark as a trade mark may not be
established to sustain a priority claim. This is what led to the
Supreme Court in Uniply Industries Ltd. (Supra) observing that
“on some other occasions courts have classified small sales
volume as so small and inconsequential for priority purposes.”
Accordingly, for establishing priority at an interim stage it may
not be necessary to show substantial sales or advertisements
but, at the same time, sufficient enough for the courts to come to
a strong prima facie opinion that there was a clear intention to
adopt the mark for the particular goods.”
xxx xxx xxx”
(Emphasis supplied)
22. This court further holds that mere registration of a tradename is not a
sufficient counter to an action for infringement or passing off. It is neither
proof of prior use, as claimed by the defendants nor honest concurrent use.
While holding that registration merely recognises the rights, which are
already pre-existing in common law and do not create any rights, a
coordinate bench of this court in Vinita Gupta v. Amit Arora, 2022 SCC
OnLine Del 3249 has held has under:

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(Emphasis Supplied)
23. Similarly, while holding that mere registration for a mark by the
defendants will not by itself preclude the plaintiffs which hold an earlier
registration of the trademark from seeking to restrain the defendants from
infringing the plaintiffs‟ marks, the court in Bloomberg Finance L.P Versus
Prafull Saklecha & Ors; 2013 SCC OnLine Del 4159 , has held as under:
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Signing Date:23.10.2024
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(Emphasis Supplied)
24. From the averments made in the plaint and the documents filed
therewith, the plaintiffs have established that they are the prior users and
registered proprietors of the UBE trademarks. The plaintiffs have also been
able to show their goodwill and reputation in respect of the UBE trademarks
in India and abroad.
25. It is to be noted that the defendants had last appeared before this
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Court on 19 January 2024, and have failed to appear since then and contest
the matter. Thus, it is evident that the defendants have nothing substantial to
submit in order to defend their case.
26. Holding that the Courts are empowered to deal with an application
under Order XIII-A of CPC and grant a summary judgment, where the
defendants have no real prospect of successfully defending their claim, and
when there is no other compelling reason why the case should not be
disposed of without the necessity of trial, this Court in the case of Su-Kam
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Power Systems Ltd. Versus Kunwer Sachdev and Another, 2019 SCC
OnLine Del 10764 , has held as under:
“xxx xxx xxx
90. To reiterate, the intent behind incorporating the summary
judgment procedure in the Commercial Court Act, 2015 is to ensure
disposal of commercial disputes in a time-bound manner. In fact, the
applicability of Order XIIIA, CPC to commercial disputes,
demonstrates that the trial is no longer the default procedure/norm.
91. Rule 3 of Order XIIIA, CPC, as applicable to commercial
disputes, empowers the Court to grant a summary judgement against
the defendant where the Court considers that the defendant has no
real prospects of successfully defending the claim and there is no
other compelling reason why the claim should not be disposed of
before recording of oral evidence . The expression “real” directs the
Court to examine whether there is a “realistic” as opposed to
“fanciful” prospects of success. This Court is of the view that the
expression “no genuine issue requiring a trial” in Ontario Rules of
Civil Procedure and “no other compelling reason…..for trial” in
Commercial Courts Act can be read mutatis mutandis. Consequently,
Order XIIIA, CPC would be attracted if the Court, while hearing such
an application, can make the necessary finding of fact, apply the law
to the facts and the same is a proportionate, more expeditious and less
expensive means of achieving a fair and just result.
xxx xxx xxx”
(Emphasis Supplied)
27. Considering the detailed discussion hereinabove, the plaintiffs have
established case in their favour for grant of decree of permanent injunction
in their favour.
28. It is to be noted that the plaintiffs have not pressed for any damages,
but have only pressed for the costs of the suit. Accordingly, in the facts and
circumstances of the present case, this Court is of the opinion that the
interest of justice shall be served in awarding costs in favour of the
plaintiffs.
Signature Not Verified
Digitally Signed
By:AMAN UNIYAL
Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 19 of 20

29. In view of the aforesaid, the present suit is decreed in favour of the
plaintiffs and against the defendants, in terms of Para 40 (i), (ii), (iii) & (vi)
of the plaint.
30. The plaintiffs are held entitled to actual costs, recoverable jointly and
severely from the defendants. The plaintiffs shall file their bill of costs in
terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side)
Rules, 2018, within a period of two months from today. As and when the
same is filed, the matter will be listed before the Taxing Officer for
computation of costs.
31. Decree sheet be drawn up.
32. The present suit, along with pending applications is disposed of.



MINI PUSHKARNA, J
OCTOBER 4, 2024
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(Corrected and released on 23 October, 2024)
Signature Not Verified
Digitally Signed
By:AMAN UNIYAL
Signing Date:23.10.2024
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CS(COMM) 807/2017 Page 20 of 20