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High Court of Delhi
MANMOHAN SINGH, J.
Citigroup INC. & Another
Versus
Citycorp Business & Finance Pvt. Ltd. & Another
CS(OS) No. 1789 of 2013
Decided On : 24-11-2014
In a trademark infringement and passing off case, the court held that the plaintiff had established a prima facie case for infringement, passing off, and unfair competition. The court found that the defendant's use of the mark CITICORP was likely to cause confusion and deception among consumers, and that the defendant had adopted the mark with the intention of trading on the goodwill and reputation of the plaintiff's mark. The court also found that the defendant's use of the mark CITICORP was likely to dilute the distinctive character of the plaintiff's mark and cause irreparable harm to the plaintiff's business.
Fact of the Case:
The plaintiff, a well-known financial services company, filed a suit against the defendant for infringement of its registered trademarks CITI and CITICORP, passing off, and unfair competition. The plaintiff alleged that the defendant was using the mark CITICORP in relation to its financial services business, and that this use was likely to cause confusion and deception among consumers. The plaintiff also alleged that the defendant had adopted the mark CITICORP with the intention of trading on the goodwill and reputation of the plaintiff's mark.
Finding of the Court:
The court found that the plaintiff had established a prima facie case for infringement, passing off, and unfair competition. The court found that the defendant's use of the mark CITICORP was likely to cause confusion and deception among consumers, and that the defendant had adopted the mark with the intention of trading on the goodwill and reputation of the plaintiff's mark. The court also found that the defendant's use of the mark CITICORP was likely to dilute the distinctive character of the plaintiff's mark and cause irreparable harm to the plaintiff's business.
Issues: The issues in the case were whether the defendant's use of the mark CITICORP infringed the plaintiff's registered trademarks, whether the defendant's use of the mark CITICORP constituted passing off, and whether the defendant's use of the mark CITICORP constituted unfair competition.
Ratio Decidendi: The court held that the defendant's use of the mark CITICORP infringed the plaintiff's registered trademarks, constituted passing off, and constituted unfair competition. The court found that the defendant's use of the mark CITICORP was likely to cause confusion and deception among consumers, and that the defendant had adopted the mark with the intention of trading on the goodwill and reputation of the plaintiff's mark. The court also found that the defendant's use of the mark CITICORP was likely to dilute the distinctive character of the plaintiff's mark and cause irreparable harm to the plaintiff's business.
Final Decision: The court granted the plaintiff's motion for a preliminary injunction, enjoining the defendant from using the mark CITICORP in relation to its financial services business. The court also ordered the defendant to pay the plaintiff's costs and attorney's fees.
Manmohan Singh, J. (Oral):
1. By this order, this Court proposes to decide the following applications:
(i) I.A. 14886/2013 under Order 39 Rule 1 and 2 read with Section 151 CPC.
(ii) I.A. 6545/2014 under Order 39 Rule 2A CPC.
(iii) I.A. 19385/2014 under Order 7 Rule 11 CPC.
(iv) I.A. No.14888/2013 under Section 149 CPC.
2. The present suit for injunction and damages for infringement of registered trade mark, passing off and unfair trade competition has been filed by the plaintiffs against the defendants in respect trademarks CITI and CITICORP. Along with the suit, plaintiffs also filed an application under Order 39 Rule 1 and 2 read with Section 151 CPC being I.A.14886/2013.
3. Summons were issued in the suit and notices in the application to the defendants on 23rd September, 2013. After hearing, detailed ex-parte order was passed against the defendants directing them to keep on hold the domain name www.citicorpbiz.com and/or any other domain name which is similar to the plaintiffs’ registered trademarks ‘CITI’ and/or ‘CITICORP’ and/or CITI family or any other deceptively or confusingly similar trademark till the next date of hearing. The defendants were also restrained from using the trademark of the plaintiffs’ ‘CITI’ and/or ‘CITICORP’ and/or CITI family or any other mark which is deceptively or confusingly similar to the plaintiffs’ registered trademark till the next date.
4. Upon service of interim order, defendants filed the written statement after delay of 57 days. The same was taken on record vide order dated 11th March, 2014. Subsequently, the plaintiffs filed an application being I.A. 6545/2014 under Order 39 Rule 2A CPC. Subsequently, defendants have also filed an application being I.A. 19385/2014 under Order 7 Rule 11 CPC. By this order I propose to decide the pending applications.
5. Brief facts of the case as stated in the plaint are that plaintiff No. 1 is a company organized and existing under the laws of the State of Delaware, United States of America, while plaintiff No. 2 is a wholly owned subsidiary of the plaintiff No.1. Plaintiffs are the owners of the trade marks CITI and CITICORP used primarily in relation to banking and financial services. It is stated that CITI was founded in the year 1812.
6. It is averred that the plaintiffs are internationally renowned and world leaders inter alia in banking and financial services which they provide under its world-renowned marks CITI, CITI & Arc Device, CITIBANK, CITIGROUP and a number of other well-known CITI family marks such as CITIBANKING, CITICARD, CITIDIRECT, CITIPHONE, CITIGOLD, CITISERVICE, etc. The mark/name CITICORP was adopted in 1972 and has been used for more than four decades.
7. It is stated that the said trademarks CITI, CITICORP and other CITI formative marks of the plaintiffs are renowned brands in India as well as worldwide. In India, the plaintiffs are the registered proprietors of the marks CITI and CITICORP, details of the same are given in Para 3 of the plaint.
8. The trademark CITICORP forms part of the plaintiffs’ Indian subsidiary Citicorp Finance India Limited which primarily offers commercial vehicle loans, construction equipment loans, loan against shares and trade advances. It is stated that Citicorp Finance India Limited provides these services in 15 states of India namely Andhra Pradesh, Chhattisgarh, Gujarat, Jharkhand, Karnataka, Kerala, Madhya Pradesh, Maharashtra, New Delhi, Orissa, Punjab, Rajasthan, Tamil Nadu, Uttar Pradesh and West Bengal.
9. It is averred that plaintiffs, popularly referred to as CITI, CITIBANK or CITIGROUP, is a global corporation with strong reach and depth in markets throughout the world. The two core business lines of the plaintiffs are Consumer Businesses and Institutional Businesses. Plaintiffs’ Global Consumer Banking consists of five primary business units – Retail Banking, CITI Branded Cards, CITI Mortgage, CITI Commercial Bank and Retail Services. The plaintiffs’ Global Consumer Ban
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