The significance of prefixes in trademarks and the likelihood of deception in similar trade names.

SANJAY KISHAN KAUL, J.

( 1 ) THE plaintiff has filed a suit for restraining infringement of trade mark, passing off, damages and delivery up etc. in respect of name INTEL. The plaintiff has sought permanent injunction in respect of the said name as a trademark, trade name, e-mail and website.

( 2 ) THE plaintiff is a company incorporated under the laws of State of Delaware, usa and is aggrieved by use by the defendants of a deceptively similarly mark to its trademark INTEL in the form of ARTINTEL. The defendants are using the mark artintel as trading style in respect of computers, software development and medical prescription services. The plaintiff claims to be engaged worldwide in the business relating to the field of computers and parts thereof including semi-conductor devices, memory chips, microprocessors, Central Processing Units etc. and have been using the mark/name as its corporate name on its products since 1968, which is the year of its incorporation.

( 3 ) THE plaintiff claims to have carried out pioneering effort in computer technology and in the year 2004 spent excess of $ 48. 7 billion on research and development program alone.

( 4 ) THE INTEL branded products of the plaintiff are stated to be increasingly used in many consumer electronic products including household products and technologies to support new consumer usage models in the digital home.

( 5 ) IN the year 1969, the plaintiff is stated to have adopted a distinctive style for representing the mark INTEL, popularly known as the INTEL dropped e logo . which has been given wide publicity. The word INTEL is written in such a manner that the alphabet e is not in the same line as the other alphabets.

( 6 ) THE plaintiff claims to have obtained registration of INTEL trademark in india in various goods in Class 9, 18, 16, 13, 34, 15, 6, 33, 27, 5, 25 and 4.

( 7 ) THE defendant no. 1 is stated to be a director of defendants 2 and 3 and all the defendants are stated to be engaged in the business of computer, computer hardware, software consultancy and also to provide medical transcription services. The plaintiff in and around September, 2000 became aware of the defendant no. 2 s application filed in respect of Class 9 of goods for the mark artintel which was published in the Trademark Journal of 16. 05. 2000. The plaintiff is stated to have immediately initiated opposition proceedings in september, 2000 at the Trademark Registry, Mumbai and the opposition application was allowed and the application of the defendants for the mark ARTINTEL in Class 9 was dismissed. However defendants are alleged to have continued to carry on the business under the name and style of ARTINTEL.

( 8 ) THE defendants were served but failed to enter appearance and were thus proceeded ex-parte. The plaintiff was directed to file affidavits of evidence. Mr. Rahul Sethi has filed the affidavit of evidence on behalf of the plaintiff who had also signed and verified the plaint and instituted the suit. The said witness has proved Exp-1 as a copy of the power of attorney in his favour dated 19. 06. 2004 Certified copies of the registered certificates pertaining to the plaintiffs have been proved as Exp-2 and Exp-3 and the copy of the trademark journal where the defendants trademark ARTINTEL was published has been exhibited as Exp-4. A brochure of the defendants has been exhibited as Exp-5. These documents have been exhibited in court today.

( 9 ) THE plaintiff s grievance is that the defendant trading style ARTINTEL includes the mark of the plaintiff INTEL. Thus the prefix in the form of ART has been affixed to the word INTEL to take advantage of the plaintiff s goodwill and reputation in the market. Not only that the pronunciation of the two marks is also stated to be such that the word ART has to be pronounced followed by the pronunciation of the word INTEL separately. The use of this mark is thus likely to mislead the customers and members of the trade into believing that the product of

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