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2012 Supreme(Del) 1681
HIGH COURT OF DELHI: NEW DELHI
MANMOHAN SINGH, J.
RED HAT INC - Plaintiff
Versus
MR. HEMANT GUPTA AND ORS - Defendants
I.A. No.10679/2011 in CS (OS) No.1654/2011
Decided on: 09.07.2012
For the Plaintiff:Mr. C.M. Lall, Advocate with Ms. Ekta Sarin & Ms. Nancy Roy, Advs.
For the Defendants: Through Mr. Arun Dhiman, Adv.
The main legal point established in the judgment is the plaintiff's exclusive right to the use of the trade mark RED HAT under Section 29(4) and Section 29(5) of the Trade Marks Act, 1999, and the grant of an interim injunction against the defendants.
Headnote:
INJUNCTION : TRADEMARK INFRINGEMENT - RED HAT - Section 29(4), Section 29(5) of the Trade Marks Act, 1999 - The court found that the plaintiff had a strong prima facie case for the grant of an interim injunction against the defendants from using the trade mark RED HAT with a device similar to the plaintiff’s SHADOWMAN device and the mark RED HAT as their corporate name. The defendants were also granted time to change or amend the name by deleting the mark RED HAT.
Fact of the Case:
The plaintiff sought an injunction against the defendants from using the trade mark RED HAT with a device similar to the plaintiff’s SHADOWMAN device and the mark RED HAT as their corporate name. The plaintiff alleged trade mark infringement and passing off by the defendants, claiming that the defendants' activities were likely to deceive and cause confusion among the public, thus affecting the plaintiff's business and reputation.
Finding of the Court:
The court found that the plaintiff had a strong prima facie case for the grant of an interim injunction against the defendants from using the trade mark RED HAT with a device similar to the plaintiff’s SHADOWMAN device and the mark RED HAT as their corporate name. The defendants were also granted time to change or amend the name by deleting the mark RED HAT.
Issues: The issues considered by the court included infringement of the plaintiff’s trade mark, passing off by the defendants, similarity of the cap device used by the defendants to the plaintiff’s SHADOWMAN device, and the benefit of user claimed by the defendants.
Ratio Decidendi: The court applied Section 29(4) and Section 29(5) of the Trade Marks Act, 1999 to establish the plaintiff's exclusive right to the use of the trade mark RED HAT and the grant of an interim injunction against the defendants. The court also considered the recurring nature of the cause of action in cases of infringement and passing off.
Final Decision: The plaintiff's application for an interim injunction was allowed with costs. The defendants were restrained from using the trade mark RED HAT with a device similar to the plaintiff’s SHADOWMAN device and the mark RED HAT as their corporate name. The defendants were granted time to change or amend the name by deleting the mark RED HAT.
MANMOHAN SINGH, J.
1. By this order, I propose to decide the pending application filed by the plaintiff under Order XXXIX, Rules 1 & 2 read with Section 151 CPC, being I.A. No.10679/2011, restraining the defendants, their directors, principals, proprietors, partners, etc. from using the offending mark RED HAT along with a device which is deceptively similar to the plaintiff’s SHADOWMAN device and/or the plaintiff’s mark RED HAT, the SHADOWMAN device and the composite mark as a trade mark or part of a trade mark, a trade name or corporate name or as part of a trade or corporate name, domain name or as a part of a domain name, as a meta tag or otherwise on the internet or the worldwide web, or in any other manner whatsoever so as to infringe the registered trademarks of the plaintiff or passing off their services of business as and for the services or business of the plaintiff.
2. The fact of the matter is that the plaintiff company is into open source services which is primarily divided into three main heads, namely:-
a. Red Hat Consulting – mainly dealing with technology assessment, implementations, quick starts, health checks, knowledge transfer workshops etc.
b. Red Hat Training – dealing with Linux system administration, enterprise application development, LAMP development etc.
c. Global Support Services (GSS) – dealing with software support, Technical Account Managers (TAMs) and Developer Support packages etc.
3. The plaintiff formed a Joint Venture in India with Clover Technologies. Plaintiff states that it has played key roles in developing E-Court project, HDFC Bank had used plaintiff’s product, JBoss Enterprise Application Platform for implementing web based solution for improved productivity, efficiency. New India Assurance also had used plaintiff’s products to build cost effective, scalable and secure infrastructure. Besides this plaintiff had executed MOUs with the various State Governments liked Tamil Nadu, Kerala for supporting the state’s development.
4. As per the averments made in the plaint, the plaintiff adopted the trade mark RED HAT in the year 1994. The SHADOWMAN logo was adopted by the plaintiff in the year 1996. The plaintiff’s first registration in India for RED HAT word per se and SHADOWMAN logo bearing No.874613 is obtained in class 9 as of 2nd September, 1999 in respect of various products, such as, computer software, namely, computer programmes for operating systems, system administration, computer communication administration, and instructional materials provided therewith as a unit. The plaintiff also obtained another registration of the trade mark RED HAT POWERED bearing No.1053335 in class 9 as of 19th October, 2001 in respect of products, i.e. computer workstations, namely, computer terminals, computer hardware and others. Various other registrations have also been obtained. One of them is the device of logo SHADOWMAN in class 41 & 42 bearing No.1307397 as of 8th September, 2004 in relation to large number of goods, such as, educational services, namely, training others in the use, maintenance, updating, configuration, installation, support and programming of computer software and others in class 41 and computer software design for others, computer consultation, computer diagnostic services etc. in class 42. The plaintiff commences the use of trade mark RED HAT and SHADOWMAN logo in India in 2000. According to the plaintiff, it registered Indian subsidiary with the MCA, i.e. Red Hat India Private Limited on 5th July, 2000.
5. The plaintiff states that in July 2008, the plaintiff came across the domain name www.redhatinfotech.com. The plaintiff further states that defendant No.4’s trademark bearing No.1859208 in Class 37 is claimed to be in use since 28th January, 2008. The plaintiff objected to the same and upon further investigation it was found out that even defendant No.1 had applied for registration of RED HAT INFOTECH (label) in Class 42 bearing No.1724581.
6. The plaintiff averred i
