Delhi High Court Restrains Sale Of Counterfeit SKF Bearings, Calls Them A “Safety Hazard” For Drivers

The Delhi High Court on 21 August temporarily restrained two Delhi-based bearing traders from selling counterfeit ball bearings under the “SKF” mark, observing that the sale of inferior quality bearings could endanger vehicle drivers and was detrimental to public interest.

Justice Jyoti Singh passed an ad interim injunction in a suit filed by Swedish bearings manufacturer AB SKF against B.M. Bearing Sales and Oriental Enterprises, and directed Bank of Baroda to freeze proceeds traced to the alleged sale of infringing goods.

The Bench observed that the “Defendants No. 1 and 2 are prima facie selling counterfeit ball bearings and related industrial equipment bearing identical marks,” and held that the plaintiff had established a prima facie case of trade mark infringement under Section 29 of the Trade Marks Act, which deals with infringement of a registered trade mark.

AB SKF submitted that it had used the SKF mark since 1907 and in India since 1923, and held multiple registrations dating back to 1942. It also submitted that its products used a distinct red, white and blue trade dress and that its “SKF Authenticate” application allowed customers to verify products through a Data Matrix Code.

SKF alleged that it discovered B.M. Bearing Sales selling counterfeit ball bearings in packaging identical to its own. An investigation at the premises further revealed that Oriental Enterprises operated from the same address and was also allegedly selling counterfeit bearings under the SKF mark.

On comparing the packaging, the Court observed that “comparison of rival trade dress/packaging shows that Defendants No. 1 and 2 have copied Plaintiff's packaging as a mirror image.” It held that the copying also prima facie violated SKF's copyright in the artistic work.

The Bench found the defendants' adoption of the mark and packaging dishonest and observed that it was made “with a mala fide intent to come close to the Plaintiff and take unfair advantage of its immense goodwill and reputation.”

It further noted that the defendants were allegedly selling “sub-standard/inferior quality ball bearings,” which posed a risk beyond commercial harm as such products were “a safety hazard for vehicle drivers and thus detrimental to public interest.”

On SKF's plea to freeze the bank accounts, the Justice Singh accepted its apprehension that the defendants could divert the proceeds. It observed that there was “merit in the contention of the Plaintiff that there is an apprehension that Defendants No. 1 and 2 may withdraw or transfer the monies in the bank accounts, if not restrained.”

Accordingly, the High Court restrained the defendants and all others acting on their behalf from using the “SKF” mark in any manner, including as part of a domain name, email ID or social media handle, and from using similar trade dress or packaging for ball bearings.

It also directed Bank of Baroda to mark a lien on two accounts to the extent of Rs. 4,97,481 against B.M. Bearing Sales and Rs. 1,95,817 against Oriental Enterprises, until further orders.