Mr. Pankaj Kumar, Advocate v. SUMITOMO CHEMICAL COMPANY LTD. ANR

Judgment

1. The present application has been filed on behalf of the defendants under Order VII Rule 11 of the Code of Civil Procedure, 1908 (hereinafter ‘CPC’) seeking rejection of plaint. Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023

2. Notice in the present application was issued on 6th December 2024. Reply has been filed on behalf of the plaintiff.

3. Submissions were heard on behalf of the parties on 12th March 2025 and 15th April 2025 when the judgment was reserved. The parties have also filed their respective written submissions. BRIEF FACTS

4. Brief facts stated in the plaint, which are relevant in deciding the present application, are as follows:

4.1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringement of copyright and passing off, along with other ancillary reliefs.

4.2. The plaintiff, a company engaged in the business of agrochemicals including pesticides, insecticides and herbicides, was incorporated on 30th June 1983 and is the parent company of the Coromandel Group founded in

1968. Coromandel Agrico Private Limited (hereinafter ‘CAPL’) and Agrimas Chemicals Limited (hereinafter ‘Agrimas’) are also engaged in the aforesaid business and are a part of the Coromandel Group.

4.3. Between 1983 and 1988, the plaintiff collaborated with one Takeda Chemical Industries Limited (hereinafter ‘Takeda’) to launch an insecticide based on certain technical component (CARTAP HYDROCLORIDE). The plaintiff entered into a non-exclusive and royalty-free License Agreement with Takeda whereby the plaintiff had to purchase the aforesaid technical component from Takeda and was permitted to sell insecticides manufactured therefrom under the mark PADAN. Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023

4.4. Takeda, in 2001, entered into a joint venture with the defendant no.1, to be constituted as Sumitomo Chemical Takeda Agro Company Limited. The aforesaid company was absorbed by Sumitomo Chemical Company Limited, the defendant no.1, in 2007. However, the plaintiff remained the exclusive user of the mark PADAN in India.

4.5. The plaintiff, in 2006, created the packaging for its product bearing the mark PADAN with the below-mentioned original artistic work and the same is continuously and uninterruptedly being used by the plaintiff since then.

4.6. In the year 2007, the aforesaid technical component became public and the defendant no.1 stopped manufacturing and supplying the same to the plaintiff. The defendant no.1, through the email dated 24th December 2007, communicated to the plaintiff that it temporarily authorized the plaintiff to use the mark PADAN in relation to the aforesaid technical component supplied by third-parties during the year 2008 or till it recommenced the supply thereof. The plaintiff then received a letter dated 4th January 2011 from the defendant no.1 stating its willingness to recommence the supply of the aforesaid technical compound from 1st April 2011 in terms of the Distribution Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023 Agreement dated 26th December 2005. It was also mentioned that defendant no.1 shall terminate the aforesaid temporary license/ arrangement in terms of the aforesaid email dated 24th December 2007 with the plaintiff. The defendant no.1 thereafter did not provide the aforesaid technical component to the plaintiff nor did it object to the continued use of the mark PADAN by the plaintiff.

4.7. The plaintiff has been honestly and bona fidely using the mark PADAN in India as a proprietor thereof. By virtue of continuous, uninterrupted and extensive use, promotion and quality control, the plaintiff has earned enviable goodwill and reputation for the mark PADAN in India.

4.8. In May 2023, the plaintiff came to know that the defendant no.2 is going to launch pesticide based on the aforesaid technical component under the mark PADAN.

4.9. From further enquiry, it was revealed to the plaintiff that the defendants commenced using the mark PADAN in May 2023. The plaintiff also procured such product of the defendant no.2 from the market. A photograph of the packaging thereof, which is deceptively similar to that of the plaintiff, is reproduced below: Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023

5. Accordingly, the present suit has been filed inter alia seeking the following reliefs: “(a) A decree of permanent injunction restraining the defendants themselves and their officers, servant, affiliates, employees and all others in capacity of principal or agent acting for and on their behalf, or anyone claiming from using, selling, soliciting, providing through, by or under him, dealership, displaying, advertising through print, visual or electronic media including on internet, domain and email addresses or by any other mode or manner dealing in the impugned trademark PADAN and packaging/artwork and/ or any other trademark/packaging/artwork which is identical with and/ or deceptively similar to the Plaintiff’s said Infringement trademark PADAN (word) and packaging/artwork relation to insecticide and other agro-chemicals amounting to: plaintiff (i) trademark/packaging/artwork. (ii) Passing off and enabling others to pass off their goods and business as those of the plaintiff. (iii) Diluting the said trademark/packaging/artwork of plaintiff and goodwill and reputation acquired thereunder. Copyright (b) A decree of permanent injunction restraining the Defendants themselves and their officers, servants, affiliates, employees and all others in capacity of principal or agent acting for and on his behalf, or anyone claiming Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023 through, by or under him, from interfering in the business of plaintiff under the said trademark/packaging/artwork. (c) Declare that is the owner and proprietor of said trademark/packaging/artwork PADAN in relation to Pesticide and goodwill reputation acquired thereunder in India.” the plaintiff SUBMISSIONS ON BEHALF OF THE DEFENDANTS

6. Mr. Rajshekhar Rao, senior counsel appearing on behalf of the defendants/ applicants, has made the following submissions in support of the application filed by the defendants under Order VII Rule 11 of the CPC:

6.1. The plaintiff has no locus standi to institute the present suit.

6.1.1. The defendant no.1 granted a non-exclusive license to CAPL to use the mark PADAN in India. Therefore, the plaintiff has wrongfully alleged that it holds a non-exclusive license to use the mark PADAN.

6.1.2. The plaintiff is neither a licensee of the mark PADAN nor has it ever used the same in India. The plaintiff has fraudulently based its plaint on CAPL’s use of the mark PADAN. However, the same is impermissible in law as both companies are separate legal entities. Thus, the term ‘plaintiff’ can only advert to Coromandel Indag Products India Limited and not to any of its alleged group companies including CAPL.

6.1.3. CAPL is currently undergoing corporate insolvency resolution process (CIRP) before the National Company Law Tribunal (Allahabad Bench). Therefore, as the claims made in the plaint arise out of the non-exclusive license granted by the defendant no.1 to CAPL, only the Resolution Professional (RP) acting on behalf of CAPL could bring an action against the defendants. However, CAPL has not even been impleaded as a party to the present suit. Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023

6.2. The plaintiff did not file two agreements between CAPL and the defendant no.1, i.e., the Trademark Agreement dated 15th March 2003 and the Distribution Agreement dated 26th December 2005 which unequivocally establish that CAPL was using the mark PADAN as a licensee of the defendant no.1, and not the plaintiff.

6.3. The plaint fails to disclose any cause of action against the defendants for the relief of declaration and/ or permanent injunction with respect to use of the mark PADAN. Admittedly, CAPL, the plaintiff’s group company was merely a non-exclusive licensee of the mark PADAN, while the defendant no.1 remains the registered proprietor of the mark PADAN bearing no.255161 in class 5 with effect from 1969. Therefore, neither CAPL nor the plaintiff can claim any proprietary rights over the mark PADAN.

6.4. The plaintiff has falsely claimed copyright ownership in the artistic work of its packaging/ logo on the basis of the Assignment Agreement dated 4th April 2006 executed between one Mr. Kailash Sharma and CAPL. However, any alleged copyright in the said artistic work shall be vested with CAPL and not the plaintiff. In any event, as per the Distribution Agreement, CAPL was obliged to seek prior permission from the defendant no.1 to introduce any packaging for its products under the mark PADAN. As no such permission was ever sought, the plaintiff’s claim of infringement of copyright in the said artistic work is unsustainable.

6.5. The packaging of products under the mark PADAN filed by the plaintiff does not mention its name but instead bears the text ‘in association with Sumitomo Chemicals Takeda Agrico Company Limited, Japan’ (refer pages 159 to 163 of the documents filed with the plaint). Such text acts as a source Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023 identifier for the consumers who associate the mark PADAN with the defendant no.1 only.

6.6. The License Agreement dated 6th December 2004 between the plaintiff and CAPL relied upon by the plaintiff is fabricated. Pertinently, in the recitals of the said agreement, the plaintiff is falsely stated to be the ‘registered trademark owner’ of the marks PADAN 4G and PADAN 50SP. SUBMISSIONS ON BEHALF OF THE PLAINTIFF

7. Mr. Pankaj Kumar, counsel appearing on behalf of the plaintiff, has made the following submissions in response:

7.1. The plaintiff is the parent company of the Coromandel Group of which CAPL is a part. Therefore, any reference to the term ‘plaintiff’ in the plaint shall include all the group companies of the Coromandel Group including CAPL.

7.2. As per the agreements dated 27th January 2000 and 6th December 2004 between the plaintiff and CAPL, CAPL was given the exclusive right, title and interest over the mark PADAN, among others, subject to payment of royalty. The aforesaid agreement dated 6th December 2004 was also enforced before this Court in CS(COMM) 363/2016. Therefore, any use of the mark PADAN by CAPL inures to the benefit of the plaintiff.

7.3. While the defendant no.1’s predecessor obtained registration for the trade mark PADAN bearing no.255161 in class 5, the defendant no.1 or its predecessor never used the said mark in India. On the other hand, the plaintiff has been continuously and exclusively using the said mark in India since

1988. Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023

7.4. The defendants, on account of their inaction towards the plaintiff’s use of the mark PADAN as well as their own non-use of the same, abandoned the mark PADAN at least since 24th December 2007 and the dealers/ distributors recognize the plaintiff as the owner and proprietor of the mark PADAN since

7.5. The plaintiff is the proprietor of the mark PADAN and the artwork contained in the packaging thereof.

7.6. The defendants, in June 2023, launched their products under the mark PADAN using the packaging which is identical with the plaintiff’s original artwork in its product packaging under the mark PADAN. Thus, defendants are attempting to ride over the goodwill and reputation of the plaintiff evidenced by uninterrupted independent use of the mark PADAN by the plaintiff since 2012. The aforesaid sufficiently discloses a cause of action against the defendants in the present suit. ANALYSIS AND FINDINGS

9. I have heard counsel for the parties and perused the material on record. At the outset, I deem it necessary to reiterate the settled position of law in deciding an application filed under Order VII Rule 11 of the CPC. The remedy under the aforesaid provision is an independent and special remedy empowering the Court to dismiss a suit at the threshold without conducting a trial if the Court is satisfied that any of the grounds mentioned in the said provision is fulfilled. The underlying object of the aforesaid provision is that the Court would prevent the plaintiff from unnecessarily protracting the proceedings in a suit and shall put an end to the sham litigation such that no further judicial time is wasted. Signature Not Verified Digitally Signed By:VIVEK MISHRA Signing Date:03.07.2025 12:37:03 CS(COMM) 441/2023

10. The aforesaid position of law has been well crystallized in several decisions of the Supreme Court such as T Arivandandam v. T.V. Satyapal1 and Dahiben v. Arvindbhai Kalyanji Bhanusali (Gajra)2. In T Arivandandam (supra), the Supreme Court held that while deciding an application under Order VII Rule 11 of the CPC, it is important to decide whether the plaint discloses a real cause of action or something purely illusory. The relevant portion from the aforesaid judgment is extracted below: “5. …The learned Munsif must remember that if on a meaningful – not formal – reading of the plaint it is manifestly vexatious, and meritless, in the sense of not disclosing a clear right to sue, he should exercise his power under Order 7, Rule 11 CPC taking care to see that the ground mentioned therein is fulfilled. And, if clever drafting has created the illusion of a cause of action, nip it in the bud at the first hearing…” [emphasis supplied] Whether the plaintiff is competent to institute the present suit

11. The plaintiff in the present suit is ‘Coromandel Indag Products India Limited’, a company incorporated on 30th June 1983 under the provisions of the Companies Act, 1956. Inexplicably, paragraph 2 of the plaint while making a reference to other companies being a part of the Coromandel Group states that the term ‘plaintiff’ includes other group companies of the plaintiff. The pleading in paragraph 2 of the plaint is set out below in verbatim: That “2. the Plaintiff Company is engaged in the business of Agrochemicals more particularly Pesticides Insecticide, Herbicides etc. Plaintiff company is the Parent company of Coromandel Groupfounded in the year 1968. Predecessor of the Plaintiff was incorporated by the name Coromandel Indag Products Private Limited in the year 1973 having registered office at 12, Police Commissioners Office Road, Madras-8, Chennai. Coromandel Agrico Pvt. Ltd., A-73, Industrial Area, Sikandrabad-