Vivek Kochher & Anr v. M/S Kyk Corporation Ltd & Ors

RAJIV SAHAI ENDLAW, J. NOVEMBER 06, 2019 "ak"

* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 6th November, 2019 + CS(COMM) 152/2018 & CC No.77/2009 VIVEK KOCHHER & ANR ..... Plaintiffs Through: Mr. Umesh Mishra with Mr. Satish Kumar & Mr. Vishal Patel, Advs. Versus KYK CORPORATION LTD & ORS ..... Defendants Through: Mr. Aayushmaan Gauba & Ms. Gunjan Chhabra, Advs. for D-1. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The two plaintiffs, namely Vivek Kochher and Vineet Kochher, instituted this suit on 30th April, 2009 to restrain the three defendants, namely (i) KYK Corporation Ltd., Japan; (ii) Metro Bearing Company, Delhi; and, (iii) Capital Machinery Company, Delhi, from infringing the mark "KYK" of the plaintiffs by adopting trade name "KYK Corporation Ltd." and by adopting the same mark "KYK". 2. The suit, originally registered as CS(OS) 1305/2009, on coming into force of the Commercial Courts Act, 2015, was re-numbered as CS(COMM) 152/2018. 3. The defendants no. 2 and 3, namely Metro Bearing Company, Delhi and Capital Machinery Company, Delhi did not contest the suit and only the defendant no. 1 "KYK Corporation Ltd." contested the suit, also by filing the counter claim which was entertained and registered as CC No.77/2009. Though the said counter claim should also have been re-numbered as the suit, but remained to be so re-numbered. The defendant no.1, in the said counter claim, sought to restrain the plaintiffs from using the trade mark/trade name KYK, or any other mark identical and/or deceptively similar thereto. 4. On the date of the institution of the suit, the two plaintiffs trading as M/s KYK Bearing International, held registrations No.949032 and 1291522 dated 21st August, 2000 and 21st June, 2004 respectively of the word mark "KYK" in Class 12 and Class 7 respectively, for parts and fittings included in Class 12, for use in automobiles, and for bearings, filters, gear and gear parts, v-belts, fan belts and machinery parts, for use in motor land vehicles respectively. 5. It was inter alia the claim of the plaintiffs in the suit, (i) that the defendant no.1 had adopted an identical/deceptively similar trade mark KYK and trade name KYK Corporation Ltd. in relation to parts of land vehicles, including bearing (axle) for vehicle wheels and bearings for wheels; (ii) that the defendants no. 2 and 3 were dealers/distributors of defendant no.1 and were selling goods manufactured by defendant no.1 under the impugned mark; and, (iii) that the plaintiffs were the originators, owners and senior users of the subject mark. 6. The suit came up first before this Court on 22nd July, 2009, when while issuing summons/notice thereof, vide ex parte ad interim order, the defendants were restrained from using the mark KYK and trade name KYK Corporation Ltd. or any other trade mark identical or deceptively similar thereto. 7. The defendant no.1, in its written statement and counter claim, inter alia pleaded (i) that the defendant no.1 was the prior user and proprietor of trade mark KYK internationally, in more than 50 countries, since the year 1952; (ii) the mark also formed a prominent part of the corporate name of the defendant no.1 and had acquired a global fame and reputation of being the most trusted name in the bearings industry; (iii) that the defendant no.1 was exporting and marketing its goods under the said mark to the United States, since as early as 1953; (iv) the defendant no.1 has also expanded its market operations to other parts of the world including India; (v) the defendant no.1 had applied for registration of the said mark, first in Japan in the year 1966 and the registration was granted in the year 1969; (vi) the mark KYK was known to the customers and trade in India; (vii) that the defendant no.1 applied for registration of the trade mark KYK in India in Classes 7 and 12 and the said applications were advertised in the Trade Marks Journal of 1st August, 2008 and no opposition thereto had been filed till the date of filing of the written state