The judgment establishes the legal principles related to trademark infringement, passing off, and the grant of permanent injunction under the Trade Marks Act, 1999.

Manmohan Singh, J. (Oral)

1. The present suit has been filed by the plaintiff for permanent injunction, restraining infringement of trademark, passing off, damages, rendition of accounts of profits, delivery up etc. against the defendants.

2. The brief facts are that the plaintiff is a company registered under the laws of USA having its registered corporate office at 170 West Tasman Drive, San Jose, California 95134 USA. It has been stated that the plaintiff and its group companies are the leading worldwide providers of networking solutions. Cisco has, since 1984, been a world leader in the development and manufacture of routers and switches, that is to say, computer hardware components using which computers network between each other, and which, in particular, regulate and control data exchange on the internet.

3. The trademarks CISCO and the Bridge Device (hereinafter referred to as the “said trademarks”) were adopted by the plaintiff in the year 1984 and have been in use continuously and extensively since 1984, although in January, 2007, Cisco introduced a new version of the “Bridge Device” trademark and is in course of slowly phasing out the version of the “Bridge Device” trademark.

4. The plaintiff claims to be the owner of the said trademarks worldwide and contends that trademarks CISCO is an invented trademark and is capable of the highest degree of protection.

5. It is alleged by the plaintiff that they have been leaders in the development of Internet Protocol (IP) based networking technologies. Today, networks are an essential part of business, education, government and home communications, and Cisco’s IP based networking solutions are the foundation of these networks.

6. The said trademarks CISCO and the Bridge Device appear on all Cisco products, the sales of which run into several billion US dollars annually. The said trademarks are also advertised globally and are well known. The details of the global annual sales of the products bearing the said trademarks is given in para 7 of the plaint, of which net sales for the period ending July, 2005 are stated to be US$ 24.801 billion.

7. The products bearing the said trademarks are contented to have been sold in India for several years. The plaintiff set up their group company in India in 1995 to provide research and development and marketing support.

8. It has been stated that the products bearing the said trademarks have been advertised in India for several years and the general public in India, particularly those involved in the field of Information Technology, is well aware of the reputation of the said trademarks. The details of the annual sales of the products bearing the said trademarks with respect to India is given in para 8 of the plaint, of which net sales for the period 2004-2005 are stated to be US$ 292.5 million.

9. The annual expenses of advertising and promoting products bearing the said trademarks, the details of the same are given in para 9 of the plaint, of which said expenses of the period ending July 2005 are stated to be US$ 4,721 million.

10. Apart from the rights in common law that have accrued to the plaintiff in favour of the trademarks, the plaintiff is the registered proprietor of the various trademarks in India details of which are given in para 11 of the plaint. Out of these trademark CISCO has been registered bearing registration No. 1227393 in class 16 and bearing registration No. 122731 in class 9 both since 27th August, 2003; the trademark CISCO SYSTEMS has been registered bearing registration No. 690651 in class 9 both since 14th December, 1995.

11. The plaintiff is also the registered proprietor of the trademark in class 9 in several countries worldwide including but not limited to the following countries:

Australia, Benclux, Canada, Chilc, China, Columbia, Costa Rica, The Czech Republic, The European community, Germany, Hong Kong, Israel, Italy, Japan, South Korea, Malaysia, Mexico, New Zealand, Panama, Peru, Philippines, P