1. Exemption allowed, subject to all just exceptions.

2. The Plaintiff shall file better copies of exempted documents, compliant with practice rules, before the next date of hearing.

3. The application stands disposed of.

I.A. No. 16107/2021 (seeking exemption from complying with the provisions of Section 12-A of Commercial Courts Act, 2015)

4. After some submissions, Senior Counsel for the parties, on instructions, state that mediation is certainly possible amongst the parties. Accordingly, the parties are directed to appear before the Delhi High Court Mediation and Conciliation Centre on 13th December, 2021.

5. The Mediation Centre is requested to appoint Mr. Rajeev Virmani, Senior Counsel as the Mediator.

6. The application stands disposed of.

I.A. No. 16105/2021 (for appointment of a Local Commissioner u/Order XXVI, Rule 9 of the Code of Civil Procedure, 1908.)

7. The application is not pressed.

8. Dismissed as not pressed.

CS(COMM) 628/2021

9. Let the plaint be registered as a suit.

10. Issue summons. Ms. Isha Malik, counsel for Defendant No. 1, accepts summons. Upon filing of process fee, issue summons to Defendant No. 2, by all permissible modes. Summons shall state that the written statement shall be filed by the Defendants within a period of 30 days from the date when the mediation is concluded. Along with the written statement, the Defendants shall also file an affidavit of admission/ denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

11. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

12. List before the Joint Registrar for marking of exhibits on 11th February, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

13. List before Court 14th January, 2022.

I.A. No. 16104/2021 (Application seeking temporary injunction against the Defendants u/Order XXXIX Rules 1 & 2 of CPC, 1908)

14. Issue notice. Ms. Isha Malik, counsel for Defendant No. 1, accepts notice. Issue notice to Defendant No. 2, by all permissible modes, upon filing of process fee, returnable on 20th April, 2022.

15. The present suit relates to piracy/ passing off /infringement of a registered design of the Plaintiff with respect to a submersible, mono-block and centrifugal pump that is registered under the Designs Act, 2000 under number 289880 dated 6th January, 2017. The Plaintiff contends that the Defendants have fraudulently imitated the design by not only copying all the essential features of the Plaintiff’s registered design, but also the entire get-up, layout, overall appearance and all the unique features.

16. Pending adjudication of the suit, Plaintiff seeks several reliefs in the instant application, including a relief of restraining Defendants and their dealers, distributors, stockiest, agents, associates and others acting on their behalf from advertising on internet or other mediums under the trade name “CROMPTON” and/ or “CROMPTON GREAVES” – or any other such trade name which is deceptively similar thereto. On this aspect Mr. Amit Sibal, Senior Counsel for the Plaintiff, submits that as per the terms of the ‘Non-Compete and Non-Solicitation Agreement’ and ‘Brand Transfer Agreement’ both dated 20th July, 2015, the Plaintiff was vested with exclusive rights over the well-known trademarks with the word “CROMPTON” and “CROMPTON GREAVES”, especially in the field of pump sets. In addition, Plaintiff is also a proprietor of various trademarks under the mark “CROMPTON” with respect to pump sets. In April 2021, it came to the knowledge of the Plaintiff that Defendant No. 1 had started manufacturing/ marketing pump sets, wherein Defendant No. 1 had deliberately used on their products and/ or in the promotional material the word “CROMPTON PUMPS”. A communication was sent to Defendant No. 1 to that effect, and in response thereto, the Defendants vide e-mail dated 26th April, 2021, replied as under:

“From: HO-Kapil Gaur <kapil.gaur@cgglobal.com> Sent: 26 April 2021 07:41

To: Mitali Basu <mitali.basu@crompton.co.in>

Subject: RE: Manufacturing/marketing pumps wherein your company has used on your products and/or in the promotional material the word CROMPTON PUMPS

Dear Ms. Mitali,

Good Morning. Hope you are doing well.

With regard to use of word CROPMTON PUMPS by some of CG’s dealers / channel partners on some of CG products and /or promotional materials, please find attached the communication addressed to all our dealers/ channel partners advising them to immediately stop using the word CROMPTON and or CROMPTON PUMPS in any of CG products and/ or promotional materials.

They are also called upon to destroy the products/ packaging material containing word CROMPTON or erstwhile Crompton Greaves logo/ brand and confirm the same to us.

Hope this addresses your concerns as highlighted in the trailing emails. Please let me know in case you have any other query.

Regards Kapil Gaur

General Manager & Head – Legal

CG Power and Industrial Solutions Limited Legal, Secretarial and Risk”

17. Defendant No. 1 also shared a communication sent by them to their channel partners which is annexed at page 394 of the Plaint and reads as under:

“Date: 23rd April, 2021

Ref: CPD/FY22/01/CP

Dear Channel Partner

Sub: Use of CROMPTON”/ CROMPTON GREAVES” trademark/ brand name

As you are aware that consumer product business of erstwhile Crompton Greaves Limited (“CGL”) was demerged vide dated November 20, 2015 passed Hon'ble High Court Bombay approving/ sanctioning Scheme Arrangement under Section 391 to 394 of the Companies Act, 1956. The Scheme of Arrangement was effective from the of filing of High order along with the Scheme Arrangement before Registrar of Companies i.e., from January 1, 2016. Pursuant to the demerger consumer product business of CGL was transferred/ moved to Crompton Greaves Consumer Electricals Limited (“CGCEL”), the resulting company. By virtue of Brand Transfer Agreement dated July 20, 2015 between CGCEL and CG Power and Industrial Solutions Limited (CG PISL) all intellectual property including the trademarks CROMPTON”/ CROMPTON GREAVES” were transferred in favor of CGCEL and CGCEL was granted exclusivity in all the intellectual property with respect the consumer products business under CROMPTON”/ “CROMPTON GREAVES” trademark/ brand name.

It has been brought to our notice by CGCEL that some of CGPISL channel partners using word CROMPTON in their invoices and some promotional Materials, while selling and/or promoting CGPISL consumer products like Pumps, Fans, Starters Etc., which is the exclusive property of CGCEL and such use is breach of Brand of exclusive trade mark gives CGCEL right to initiate necessary proceedings for infringement and/ or passing off of its trademark and related intellectual property.

In view of this you are advised to stop forthwith using the mark CROMPTON on any of CGPISL consumer products, invoices while selling CGPISL consumer products, and/or promotional materials either as a trade mark and/or trade name. Also advice you to destroy erstwhile Crompton Greaves Ltd packing materials, promotional materials which contains the CG logo as well as mark/ brand “CROMPTON/ CROMPTON GREAVES” and inform us at the earliest by way of e mail or letter.

We look forward to hearing from you at the earliest. for CG Power Industrial Solutions Ltd.,

Pradip Arote

General Manager – Consumer Business”

18. Mr. Sibal submits that despite this communication, products of the Defendants are being sold under Plaintiff’s trade name and refers to product listings on websites such as www.amazon.in – to demonstrate that the Defendants’ impugned products are being sold under the caption ‘Crompton Greaves CG Shallow Well Jet Pumps with Stainless Steel Shaft (1HP)’. Mr. Sibal emphasises that if one were to do a general search on Google for “CROMPTON GREAVES Pumps”, the Defendants’ products are shown in the search results. Despite the assurances of Defendant No. 1, even after the foregoing incident, there have been several instances of communications being circulated by the Defendant No. 1 in the consumer electrical market – whereby Defendant No. 1 has desperately tried and is still trying to show some association with the Plaintiff, its reputation and goodwill, in order to springboard their activities.

19. Mr. Jayant Mehta, Senior Counsel for Defendant No. 1, at the outset, refutes the allegations and states that Defendant No. 1 does not claim any right over the trade name “CROMPTON” or “CROMPTON GREAVES”. He states that Defendant No. 1 stands by the afore-noted communications and undertakes to once again advise their channel partners/ dealers and distributors – not to use the trademarks/ brand name “CROMPTON” or “CROMPTON GREAVES”.

20. Mr. Mehta further asserts that Defendant No. 1 has, in fact, never used the trade name “CROMPTON” or “CROMPTON GREAVES” on any of their products.

21. Taking the afore-said statement of Mr. Mehta on record and binding Defendant No. 1 to same, it is directed that Defendant No. 1 would send a communication to its channel partners, dealers, distributors advising them not to use the trade name “CROMPTON” or “CROMPTON GREAVES” in any manner whatsoever, including advertising on online e-commerce platforms. The remaining prayers in the application shall be considered after completion of pleadings.

22. List before the Joint Registrar for completion of pleadings on 11th February, 2022.

23. List before the Court on 14th January, 2022.