The recurring infringement of a registered trademark gives rise to a fresh cause of action, and the threat of infringement of trademark rights establishes a cause of action, irrespective of the defendant's current business operations.

JAYANT NATH, J.

IA No. 3293/2015

1. This application is filed by the defendants under Order VII Rule 11 CPC for rejection of the plaint. The plaintiff has filed the present suit seeking a decree of injunction to restrain the defendants, their directors etc. from using the name Intel Constructions Private Limited as their trade name or using the name/mark INTEL as their trademark, trade name, email address, website address etc. Other connected relief’s are also sought.

2. As per the plaint the plaintiff states that it is the world’s largest semiconductor chip maker and the plaintiff and its subsidiaries are engaged in the business of developing advanced integrated digital technology platforms for the computing and communication industries. The plaintiff’s products include microprocessors chipsets, motherboards, flash memory, wired and wireless connectivity products etc. The details of the plaintiff’s functioning/operation worldwide have been stated in Para 1 of the plaint. It has been further stated that the mark INTEL/formed part of the corporate name and a mark for its product since 1968, the year it was incorporated. Intel Logo was adopted in 1969. In India the plaintiff has formally established its operation in 1988 with opening of its branch in Bangalore. However, products have been exported to India since 1972. It is also pleaded that the plaintiff uses its INTEL mark on products beyond computers also. This brand is being used in many consumer electronic products including set-top boxes, media centres, digital audio and video devices and household appliances such as microwave ovens. Other items including products like T-shirts, polo shirts etc. have also been sold with the said brand. Details of the sales, advertisement, promotional expenses etc. have been given in the plaint in paragraph 13. In paragraph 16 of the plaint, the details of registration of the INTEL word mark in various classes have been stated.

3. In the plaint it is further pleaded that the defendants are engaged in the construction business and are trading under the name of Intel Constructions Private Limited. It is stated that around December 2009 the plaintiff during the course of search into the record of Registrar of Companies (ROC) record came across the defendants company. It is believed by the plaintiff that the defendant company has been incorporated to benefit from the reputation and strength of the INTEL mark. It has also been stated that presently the defendant company currently exists on paper but it can be activated to enlarge their scope of operation, leveraging the strength of INTEL mark. It is pleaded that the plaintiff is aggrieved by such continued use of its well known trade name/trade mark by the defendant. It is pleaded that the defendants adoption and use of the INTEL mark as trade name amounts to wilful infringement of the plaintiff’s registration for the mark INTEL in particular registration Nos. 678000, 803796, 1240068 within the meaning of section 29(4) and (5) of the Trademarks Act, 1999. It is further stated that the defendants have adopted the trade name INTEL to benefit from the plaintiff’s envious reputation. Hence, it is pleaded that the defendants have been engaged in passing off their business as that of the plaintiff’s business.

4. The present application filed by the defendant for rejection of the plaint. It is a short application, the relevant part of which reads as follows:-

“1. The Applicant Defendants submit that the Plaint is liable to be rejected for the following amongst other reasons:

(i) The Suit prays for a permanent injunction against the Defendants, for an order for delivery up of all printed matter bearing the names "Intel Constructions Pvt. Ltd.", and for damages of Rs. 20,00,000/- (Rupees Twenty Lacs only) on account of alleged unlawful use of the trade name Intel.

(ii) The Suit has been filed under Section 29 of the Trade Marks Act, 1999 alleging infringement and passing off by the Defendant No. 3 of t