Trademark infringement, well-known trademark recognition, likelihood of confusion, dilution of trademark distinctiveness

1. The plaintiff-company was established in the year 1917. It is the principal investment holding company of the Tata Group which had a turnover of Rs.96,000/- crore for the year 2006-2007 and is stated to be one of India’s most trusted business houses. The name TATA is stated to have been derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. For the year 2006, Tata Group was also ranked as 20th amongst world’s most reputed companies. The name TATA is being used by the plaintiff company since its inception in the year 1917 and it is claimed that on account of its highly descriptive nature and pioneering activities of the founder, the name TATA has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata Group, which is known for high quality of products manufactured and/or services rendered by it under the trade mark/name TATA. The House of Tatas comprises of over 100 companies of which over 50 companies use TATA as a key and essential part of their corporate name. It is claimed that being proprietor of the trade mark TATA, the plaintiff company enjoys exclusive rights in the aforesaid mark. The plaintiff company claims to be owner of various trademarks which contain the name TATA as a part of the registered trademark. It is alleged that on account of continuance and extensive use of the plaintiff’s trade mark TATA over a long period of time spanning a wide geographical area, coupled with vast promotion and publicity, the said trademark enjoys an unparalleled reputation and goodwill and has acquired the status of a “well known” trademark.

2. The defendant no.1, which is carrying the business under and name and style of “Tata Diamonds” is alleged to be engaged in the business of diamonds and diamond jewellery. He has also registered a domain name “tatadiamonds.com”. The defendant no.3, public domain registry is state to be the sponsoring Registrar of the domain name, whereas, defendant no.4 is stated to be providing web hosting service for the domain name.

3. The case of the plaintiff is that by using the word “Tata”, which is phonetically, visually and structurally similar to the plaintiff’s registered trademark, the defendant is infringing its trademark nos. 562929, 562469, 562934, 563533, 563539, 563544, 563548, 563804, 562939 & 838430. It is also alleging that use of the word Tata as part of the trade mark/ trade name/web name is likely to cause confusion and deception in the mind of the public, which may be misled to assume that the defendant has a connection with the House of Tatas, in fact there being no connection or affiliation.

It is also alleged that these trade activities of defendant nos. 1 & 2 under the impugned name are likely to cause injuries in the business, goodwill and reputation, which the mark “TATA” enjoys in a number of activities. The plaintiff has, therefore, sought an injunction restraining the defendant for using any trademark/trade name/web name, of which word “TATA” forms. The plaintiff has also sought an order directing transfer of domain name “tatadiamonds.com” to it. The plaintiff has also claimed damages amounting to Rs 20,05,000/- besides rendition of accounts in respect of damages caused to it on account of unauthorized use of the impugned business name and domain name by defendant no 1.

4. The defendant nos. 1 to 3 were proceeded ex-parte vide order dated 08.8.2008. However, during the pendency of the suit there was a settlement agreement dated 7th October, 2011 between plaintiff and defendant No.4 whereby defendant No.4 surrendered the domain name www.tatadiamonds.com and undertook not to use or tamper with the aforesaid domain name, subject to plaintiff not pressing for any damages or payment against it and not to press or continue the suit against it. In view of the settlement agreement, the name of defendant No.4 is deleted from the array of defendants.

5. The question whether “TATA” is a well known mark or