VIVEK KOCHHER Vs. KYK CORPORATION LTD

JUDGEMENT

(1.) By this order, I propose to dispose of the applications (hereinafter referred to as "IAs") bearing Nos. 9131/2009, 11984/2009 and 12427/2009. IA No. 9131/2009 has been filed by the plaintiffs under Order 39 Rule 1 & 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as "CPC") while IA Nos. 11984/2009 and 12427/2009 have been filed by defendant No.1 under the provisions of Order 39 Rule 4 of the CPC.

(2.) In order to dispose of aforementioned applications the following facts of the case set up by the parties required to be noticed. Plaintiff's case

(3.) On the other hand, defendant No.1 has not only filed its written statement refuting plaintiffs claim, but also instituted a counter claim. The case set up by the defendants is that they are the prior user, as well as the proprietor of the trade mark KYK International, since 1952. Defendant No.1, it is claimed, was founded by Mr Kiyosias Yamamoto. Defendant No.1 was originally incorporated in the year 1952, under the name Kabusikikaisiya Yamakei Bearing Limited. The founder Mr Kiyosias Yamamoto coined the mark KYK by taking the first letters of the name of his company Kabusikikaisiya Yamakei, by combining the same with first letter of his own name, Kiyosias. It is stated that while the mark KYK remained with the defendants, the corporate name of defendant No.1 was changed, in 1982, to Tottori Yamakei Bearing Seisakusho Ltd. It is at this time that the manufacturing facility of defendant No.1 had been shifted to Tottori; a province in Japan, in order to meet manufacturing capacities. In the year 2000, once again the name of defendant No.1 was changed to its present name KYK Corporation Ltd. Defendant No.1 claims that they have been exporting and marketing goods to U.S.A., since in 1953 and thus, attained a wide market reputation. Furthermore, defendants have expanded their operations to other countries, such as Singapore, China, Taiwan, Iran, Korea, Egypt, U.A.E., Vietnam, Bangladesh and India. As a matter of fact it is claimed that, in most of the countries mentioned above, it has obtained registrations in class 7 and 12. In particular, in respect of its presence in India, defendant No.1 claims that they have had presence in India since 1980, and that their goods have been marketed in India, extensively, and without impediment since then. Defendant No.1 claims that goods to India have been exported directly through Japan, Hong Kong, Singapore and Dubai. However, since 2005, defendant No.1 has been exporting goods into India either through its authorized dealer M/s Gulf Worldwide Bearings FZE, Dubai or, through the dealers appointed by the said authorized dealer. Based on this, defendant No.1 claims that it has worldwide reputation, which is not, limited to any particular geographical boundary. In other words, it is claimed that its worldwide reputation has spilled into India. It is averred that, in any event, not only has defendant no.1 been selling goods under the said mark in India, but has also taken steps to popularize the said goods in India through, advertisement and other modes of publicity. Defendant No.1 has disputed plaintiffs claim of prior user. It is averred that, in any event, plaintiffs claim of user is only since 1996 whereas, the defendants have been using the mark KYK from 1952 onwards. Defendants have also disputed the veracity of the deed of assignment purportedly executed in favour of the plaintiffs. Defendant No.1 has also averred that plaintiffs are not entitled to any interim injunction as prayed, in view of the fact that, on their own showing they became aware of the defendant's mark in the month of October, 2008, whereas they approached the court only in June, 2009. It is stated that simple search on the internet (i.e., a global search) would have shown to the plaintiffs that defendant No.1, and their mark, was already in existence. It is averred that plaintiffs mark KYK bears an acute similarity with the mark of defendant no.1, which is evident from the manner in which it is written, as well as, in the adoption of the artistic font. Based on the above, defendant No.1 has sought by way of counter claim, a perpetual injunction against the plaintiff's use of the mark KYK, as well as, other consequential reliefs including damages. Submissions of Counsels