The main legal point established in the judgment is the extensive reputation and goodwill of the plaintiff's trademark 'ICICI', the unauthorized registration of the infringing domain name 'ICICIGROUP.COM' by the defendant, and the court's reliance on previous judgments and the defendant's failure to contest the matter in confirming the interim order and decreeing the suit in favor of the plaintiff.

Headnote:
Trademark Infringement - ICICI - Trade Marks Act, 1999 - Section 2(1)(zg), Section 29 - The court discussed the extensive reputation and goodwill of the plaintiff's trademark 'ICICI' and its registration in various jurisdictions. The defendant's unauthorized registration of the domain name 'ICICIGROUP.COM' was found to be in bad faith and an act of infringement and passing off. The court relied on previous judgments and the defendant's failure to contest the matter, confirming the interim order and decreeing the suit in favor of the plaintiff.
Fact of the Case:

The plaintiff filed a suit for trademark infringement, passing off, and unfair competition against the defendants for using the domain name 'ICICIGROUP.COM' which infringed the plaintiff's trademark 'ICICI'. Despite service, the defendants did not appear, and were proceeded ex parte. The plaintiff provided evidence of the extensive reputation and goodwill of the 'ICICI' trademark, as well as the defendant's unauthorized registration of the infringing domain name.
Finding of the Court:

The court found that the plaintiff had established the adoption and extensive use of the 'ICICI' trademark, its registration in various jurisdictions, and the defendant's unauthorized registration of the infringing domain name. The court confirmed the interim order and decreed the suit in favor of the plaintiff, citing previous judgments and the defendant's failure to contest the matter.
Issues: The issues involved trademark infringement, passing off, and unfair competition related to the unauthorized use of the domain name 'ICICIGROUP.COM' which infringed the plaintiff's trademark 'ICICI'. The court also addressed the extensive reputation and goodwill of the plaintiff's trademark and the defendant's bad faith registration of the infringing domain name.
Ratio Decidendi: The court relied on the extensive evidence provided by the plaintiff regarding the reputation and goodwill of the 'ICICI' trademark, its registration in various jurisdictions, and the defendant's unauthorized registration of the infringing domain name. The court also cited previous judgments and the defendant's failure to contest the matter as grounds for confirming the interim order and decreeing the suit in favor of the plaintiff.
Final Decision: The court confirmed the interim order and decreed the suit in favor of the plaintiff, restraining the defendants from using the website 'ICICIGROUP.COM' and transferring the website to any third party, with costs.

JUDGMENT :

G.S. Sistani, J.—

1. Plaintiff has filed present suit for permanent injunction restraining infringement of trademark, passing off, unfair competition, delivery up, rendition of accounts of profits, damages, etc. against the defendants, seeking to restrain defendants, their agents, representatives and all those acting on its behalf from using or operating in any manner the website "www.icicigroup.com? / domain name ICICIGROUP.COM, or any deceptive variant(s) thereof, amounting to infringement of plaintiff's trademark "ICICI".

2. Despite service, none appeared on behalf of the defendants. Accordingly, by order dated 19.01.2010 defendants were proceeded ex parte. Liberty was granted to the plaintiff to file ex parte evidence and the matter was placed before Joint Registrar for marking exhibits on documents.

3. Necessary facts to be noticed for disposal of this suit are that the Plaintiff adopted its trademark/service mark "ICICI" in the year 1955. The Plaintiff's trademark "ICICI" is an abbreviation of arbitrary words consisting of "Industrial Credit and Investment Corporation of India" and over the years has acquired tremendous reputation and goodwill. The Plaintiff's trademark registrations date back to the year 1998 and have been exhibited as Ex PW1/2. The Plaintiff's domain name ICICIBANK.COMwas registered on 16th July, 1996. The Plaintiff has filed Registration certificates for their Trademark "ICICI" which stands registered in various jurisdictions such as, Hongkong, Japan, Korea, China etc.

4. Plaintiff has filed affidavit by way of evidence of Sh. Sanjay Sharma, the constituted and lawful attorney of the plaintiff. Copy of the power of attorney in favour of Sh. Sanjay Sharma, has been exhibited as Ex. PW-1/1.

5. Sh. Sanjay Sharma, has deposed that the plaintiff is a private sector bank offering a wide range of banking products and financial services to its corporate and retail customers through a variety of delivery channels and through its specialized subsidiaries and affiliates in the areas of investment banking, life and non-life insurance, venture capital and asset management; and plaintiff's equity shares are listed in India on Bombay Stock Exchange and National Stock Exchange. It is deposed that the Plaintiff's reputation and goodwill under mark "ICICI" extends beyond India and the same is evident from the presence of the Plaintiff on the New York Stock Exchange ("NYSE").

6. The witness has deposed that the plaintiff adopted the mark "ICICI", in respect of its services, in the year 1955 and the first use of the trademark "ICICI" was on 5th January 1955, the date on which the Plaintiff's predecessor ICICI LIMITED was incorporated. Plaintiff's predecessors in business, a company under the name "ICICI LIMITED", formerly known as "Industrial Credit and Investment Corporation of India? was incorporated under the aegis of the Government of India, World Bank and representatives of private Industry on January 5, 1955, as a Public Limited Company, with the primary objective of providing foreign currency loans to industrial projects and to encourage and assist industrial development and investment in India, and which was also designated as a 'public financial institution' vide section 4A of the Companies Act, 1956. ICICI LIMITED in the year 1994 established a separate wholly owned banking subsidiary under the name ICICI Banking Corporation Ltd. Later on ICICI Banking Corporation was renamed as "ICICI BANK LIMITED". In the year 1999, the Plaintiff became the first Indian company and the first bank or financial institution from Non-Japan Asia to be listed on the New York Stock Exchange (NYSE).

7. This witness has also deposed that in the year 2002, the Board of Directors of ICICI and ICICI Bank Limited approved the merger of ICICI Limited and two of its wholly owned retail finance subsidiaries; ICICI Personal Financial Service

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2011 Supreme(Del) 1081

IN THE HIGH COURT OF DELHIG.S. Sistani, J.ICICI Bank Ltd. - AppellantVersus Chuandong XU And Another D+ - RespondentCS (OS) 2606 of 2008Decided On : 22-12-2011

Cases Referred (1)

IN THE HIGH COURT OF DELHI
G.S. Sistani, J.
ICICI Bank Ltd. - Appellant
Versus
Chuandong XU And Another D+ - Respondent
CS (OS) 2606 of 2008
Decided On : 22-12-2011