The main legal point established in the judgment is the infringement of registered trademarks, legal protection of domain names under the laws relating to passing off, and the application of the law relating to passing off to domain name disputes.

M.L. MEHTA, J.

1. The present suit has been instituted by the plaintiffs against the defendants seeking permanent injunction against the defendants from using the trademark/domain name www.tatainfotech.in or any other mark/domain name which is identical with or deceptively similar to the plaintiff’s trademarks TATA/TATA INFOTECH. The plaintiffs are also praying for an order for transfer of the domain name www.tatainfotech.in to the plaintiffs from the register of the Registrar, Key-Systems GmBH, and for delivery-up of all infringing materials along with the rendition of accounts of profit illegally earned as well as damages.

2. This suit has been filed by Tata Sons Ltd., a company incorporated under the Indian Companies Act, 1913 (plaintiff no.1) and its subsidiary Tata Infotech Ltd., a company incorporated under the Indian Companies Act, 1956 (plaintiff no.2). The plaintiffs have contended that the plaintiff no.1 has been established in the year 1917 and is the principal investment holding company of the Tata Group, which is India’s oldest, largest and best-known conglomerate with a turnover of USD 9 Billion. The name TATA is submitted to be have been derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. It is also submitted that the name TATA is being used by the plaintiffs 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 trademark/name TATA.

3. It is also submitted that the House of Tatas comprises over 50 companies which use TATA as a key and essential part of their corporate name. Additionally, it is also contended that there are numerous overseas companies, philanthropic bodies and autonomous public institutions which are promoted by the plaintiff no. 1. And that plaintiff no. 1 is the registered proprietor of the trademarks pertaining to and/or comprising the word TATA in relation to various goods falling across various classes of the Fourth Schedule of the Trade Mark Rules, 2002. By virtue of the said registration, it is contended that plaintiff no. 1 has the exclusive right in the said trademark and is thus entitled to the exclusive use thereof.

4. Plaintiff no. 2 has submitted that it is a pioneer in the field of information technology and has been using the trade name and service mark TATA INFOTECH since the year 1997. And that it is a total systems integrator and one of the largest software services and solutions providers in the world and carried out activities including software consulting, hardware manufacture, offshore software development, systems integration etc. And that due to its credibility built over the years, its customer centric approach and its fast and high quality services and solutions being provided under the service mark TATA INFOTECH, the plaintiff no. 2 has been conferred with various recognition and awards, which reflect its immense goodwill and reputation, that it enjoys in its field in India and abroad.

5. The plaintiffs have also emphasized that they have an enormous presence on the internet and own various domain names, inter alia tata.com, tatainfotech.com, etc. And that the plaintiff no.2 with a view to advance its business activities registered the domain name www.tatainfotech.com as far back as January 1998. Apart from containing extensive information pertaining to the plaintiff’s business, it is contended that these websites also facilitate certain facilities such as online business queries and are therefore, in a sense, e-commerce websites.

6. The plaintiffs have contended that hey became aware of the registration of the domain name www.tatainfotech.in by the defendant no. 1, on February 21, 2005, when the said defendant sent an email t