2003 Supreme(Del) 849

High Court Of Delhi
CASIO INDIA COMPANY LIMITED - Appellant
Versus
ASHITA TELE SYSTEMS PRIVATE.LIMITED - Respondent
I.A. 6564 of 2002
Decided On : 09/08/2003

Headnote:Trade and Merchandise Marks Act, 1958 - Section 28, 29, 105, 106 — Interim injunction — Infringement and passing off action — Plaintiffs trade mark and trade name "CASIO" and defendant marketing its products through website with the domain name "www.casioindia.com" — Said domain name identical confusingly similar to the plaintiffs trade mark — Failure of defendant disclose any right to use the word CASIO in its domain name — Prima facie case made out by plaintiff — Injunction granted as prayed for.

       Held:

       Defendant has failed to disclose any right or title to use CASIO in its domain name. The impugned domain name is confusingly similar to plaintiffs trade mark and brand name CASIO and is likely to cause confusion. Because of the impugned domain name, members of the public are likely to be misled in believing that defendant has a business connection or is associated with the plaintiff and/or CASIO Japan. Simply because the defendant continues to deal in CASIO products in India on principal to principal basis or sells the same, it does not entitle him to use the brand name CASIO as a domain name in its website. Even the distribution agreement, which the defendant had with the plaintiff/Casio Japan has since expired and has not been renewed.

       The plaintiff has made out a good prima facie case for the grant of an injunction. The balance of convenience is also in favor of the plaintiff and against the defendant. The defendant cannot be permitted to continue with the use of trade mark and brand name CASIO in its domain name. Accordingly, defendant No. 1 is restrained from using he name CASIO in the impugned website www.casioindia.com. Defendant No. 2 would also permit defendant No. 1 to have a domain name registered but without the word CASIO.

       Section 105, 106 - Interim injunction — Suit for permanent and mandatory injunction — Locus standi — Plaintiff company expressly authorised in agreement entered into with its foreign principal to use the latters brand name CASIO in India — CASIO brand products has locus standi to file suit for restraining defendant from passing off its domain name — No specific assignment or authorisation by the foreign company needed to file the suit — Civil Procedure Code, 1908, Order 39, Rules 1,2.

       The objection of defendant raised as to locus standi and authority of the plaintiff to institute the suit is without merit. The Agreement dated 7.11.2000 between Casio Japan and plaintiff records the user of the brand name by the plaintiff since 1996. The agreement specifically records that the plaintiff is and had been authorised to use the brand name CASIO in India since its incorporation. The plaintiff was incorporated in 1996. The agreement further authorised the plaintiff to appoint stockists, distributors, C&F Agents for sales and marketing of Casio brand product. The agreement term was for a period of two years and it was in force at the time of institution of the suit. As per the affidavit dated 20th March, 2003, filed by the plaintiff, the agreement has since been extended. There is no specific assignment or authority required empowering the plaintiff to sue because the said right is a natural consequences to the existence of the plaintiff as a juristic person, under the Companies Act. The impugned domain name on the defendants website uses the name identical to the corporate name of the plaintiff. thereforee, irrespective of any trade mark right, it has an inherent right under common law to seek a restraint on any other business entity from using its corporate name to do business and that too in the same class of products. The present suit in substance is one of seeking a, restraint on passing off a portal/website as that of the plaintiff and its principal. Accordingly, no specific assignment of trade mark or authority is required for instituting the suit. thereforee, the plaintiff has locus to institute the suit and the objection of the defendant is without merit.

       Section 105, 106 - Interim injunction — Passing off action — Territorial jurisdiction — Defendant carrying on business from Bombay — Suit for permanent injunction from using the impugned domain name website before Delhi High Court — Access to impugned website using the domain name can be had from Delhi — Delhi High Court has territorial jurisdiction to entertain the suit — Civil Procedure Code, 1908, Order 39, Rules 1 & 2.

       The suit relates to an action of passing off in respect of a domain name of a website. The suit is not in respect of any allegation of any clandestine specific sale of tangible products within the territory. The defendant No. 1 admits the sale of CASIO products through the website. It is also not denied that the website can be accessed from Delhi.

       Once access to the impugned domain name website, could be had from anywhere else, the jurisdiction in such matters cannot be confined to the territorial limits of the residence of the defendant. Further more in a passing off action it is not incumbent upon the plaintiff to prove any actual sale or any particular act of deception, mere likelihood of deception, whereby an average person is likely to be deceived or confused is sufficient to entertain an action for passing off. thereforee, it is not at all required to be proved that any actual deception took place at Delhi. Accordingly the fact that the website of defendant No. 1 can be accessed from Delhi is sufficient to invoke the territorial jurisdiction of the Delhi High Court.

       Accordingly, the objections with regard to the territorial jurisdiction is without merit and this Court can try and entertain the suit.

       Section 105, 106 - Interim injunction — Plea of delay, laches or acquiescence — In order to raise the plea of acquiescence the defendant who alleges should have been acting in ignorance of the title of the other person, and it must be such as to lead to an inference of a license sufficient to create a new right in the defendant — Civil Procedure Code, 1908, Order 39, Rules 1 & 2.

       While the delay or laches may defeat the claim for damages or rendition of accounts, but would not result in refusal of the relief of injunction, in case the plaintiff is so entitled otherwise. In the instant case, continuous user of the domain name site gives to the plaintiff a fresh cause of action apart from the right of the plaintiff qua the defendant to seek a restraint on the later exploiting its goodwill and reputation or trading in a manner so as to mislead the general public that the business of the defendant is the business of the plaintiff or is connected with it. The question of prejudice caused to the general public also comes into play.

       The objection of the defendant is based on the registration of the impugned domain name on 13.11.1998, when the plaintiff was known as Casio Bharti Mobile Communication Ltd. The plaintiff has, accordingly, acquiesced in the use of the domain name by the defendant for 37 months.

       It cannot be that the defendant who was having even a distribution agreement with the plaintiff and arrangement with Casio Japan could be ignorant of the right of Casio Japan and plaintiff to the exclusive use of the trade mark and brand name "CASIO. Besides no positive act on the part of the Casio Japan or plaintiff has been disclosed showing plaintiffs knowledge of the use of impugned domain name by defendant. In these circumstances, the ingredients as required for acquiescence are not made out.