IN THE HIGH COURT OF DELHI
Manmohan Singh, J.
Motorola Inc. And Others - Appellant
Versus
Motorola Auto India Pvt. Ltd. And Others - Respondent
I.A. No. 22817/2015 in CS (OS) 1966/2006
Decided On : 06-11-2015
TRADEMARK - Infringement of Trademark - Passing Off - Dilution - [Trade Marks Act, 1999, Section 29(4) and 29(5)] - The court discussed the infringement of the trademark MOTOROLA by the defendants and the passing off of their goods as that of the plaintiffs. The court also considered the dilution of the distinctive character and reputation of the plaintiffs' mark MOTOROLA.
Fact of the Case:
The plaintiffs filed a suit for permanent injunction restraining passing off, infringement of trademark, damages, rendition of accounts, and delivery up against the defendants. The defendants were restrained from using the trade mark MOTOROLA and domain name Motorola-auto.com, but continued to use MOTOROLA as a trade name.
Finding of the Court:
The court found that the defendants infringed the plaintiffs' registered trademark MOTOROLA under Section 29(4) and 29(5) of the Trade Marks Act, 1999. The defendants' use of the trademark as their trade name constituted passing off, aiming to cash in on the plaintiffs' goodwill and reputation. The court also recognized the dilution of the plaintiffs' trademark by the defendants' actions.
Issues: The issues included infringement of trademark, passing off, and dilution of the distinctive character and reputation of the plaintiffs' mark MOTOROLA.
Ratio Decidendi: The court held that the defendants' use of the trademark MOTOROLA as their trade name constituted infringement under Section 29(4) and 29(5) of the Trade Marks Act, 1999. The court also found that the defendants' actions amounted to passing off and dilution of the plaintiffs' trademark.
Final Decision: The court granted a decree for permanent injunction against the defendants, directed them to take appropriate steps to change their corporate name and delete the impugned name MOTOROLA. The court also awarded punitive damages of Rs. 10 lakhs to the plaintiffs and ordered the defendants to pay costs.
JUDGMENT :
Manmohan Singh, J.-
1. The plaintiffs have filed the suit for permanent injunction restraining passing off, infringement of trademark, damages, rendition of accounts, delivery up etc.
2. After completing the pleadings the defendants stopped appearing in the matter. Therefore, by order dated 16th September, 2015, they were proceeded ex-parte.
3. Ex-parte evidence was produced by way of affidavit of Mr. Vikas Garg son of Mr. Siddharth Kumar resident of 1273, Deerfiled Park Unit, 104, Buffalo Grove 60089, USA. No cross was conducted by the defendants. When the matter is taken up today, there is no representation on behalf of the defendants. The plaintiffs' counsel has made submissions. Written submissions are also filed.
4. Original Power of Attorney dated 22nd December, 2014 in favour of the PW-1 on behalf of Motorola Solutions India Pvt. Ltd. from Motorola Solutions India Pvt. Ltd. along with Board Resolution dated 19th December, 2014 has been exhibited as Ex. PW-1/86(Colly). Original Power of Attorney dated 8th January, 2015 in favour of PW-1, on behalf of Motorola Trademark Holdings, LLC, the Plaintiff No. 3, is on record of plaintiffs' documents filed vide list of documents dated 7th March, 2015 and the same has been exhibited as Ex. PW1/87 (Colly).
5. Mr. Rajesh Madan the erstwhile Company Secretary of plaintiff No. 2 had signed and verified the plaint dated 18th January, 2000 on behalf of plaintiff No. 1. The copy of the Power of Attorney dated 17th December, 1999 executed in favour of Mr. Rajesh Madan by the plaintiff No. 1 is on record filed along with list of documents dated 19th January, 2000. The original Power of Attorney dated 17th December, 1999 was filed by the erstwhile plaintiffs' witness Mr. B.B. Bhatia along with his affidavit dated 30th October, 2008 has been exhibited as Ex. PW1/1.
6. The plaintiff No. 2 had also authorized Mr. Rajesh Madan to sign and verify the plaint vide Power of Attorney dated 20th August, 1997 pursuant to Board Resolution dated 29th August, 1997. The copy of power of attorney dated 20th August, 1997 and Board Resolution dated 29th August, 1997 were filed by Mr. B.B. Bhatia along with his affidavit and has been exhibited as Ex. PW 1/2 and Ex. PW 1/3 respectively. The original Power of Attorney dated 20th August, 1997 executed in favour of Mr. Rajesh Madan by the plaintiff No. 2 is not traceable as mentioned in the affidavit. It is deposed that Mr. Rajesh Madan had further sub-delegated his power to Mr. Nakul Kumar who had signed the plaint on behalf of the plaintiff No. 2. The original power of attorney dated 4th August, 1999 in favour of Mr. Nakul Kumar executed by Mr. Rajesh Madan, Constituted Attorney of plaintiff No. 2 was filed by Mr. B.B. Bhatia along with his affidavit and has been exhibited as Ex. PW 1/4. The amended plaint dated 3rd May, 2006 was signed by Mr. Deepak Adlakha on behalf of the plaintiffs.
7. It is stated that PW-1 corresponded with Mr. Rajesh Madan, Mr. Nakul Kumar and Mr. Deepak Adlakha several times in course of day to day business. He is familiar with their hand writing. He identifies their signatures. Mr. Rajesh Madan, Mr. Nakul Kumar and Mr. Deepak Adlakha are no more employed with the plaintiff No. 2.
8. The amended plaint dated 25th January, 2013 was signed by Mr. Kiran Kumar Gadi on behalf of the plaintiffs. Original Power of Attorney dated 7th May, 2012 in favour of Mr. Kiran Kumar Gadi on behalf of Motorola Solutions India Pvt. Ltd. from Motorola Solutions India Pvt. Ltd., the plaintiff No. 2, is already on record of plaintiffs documents filed vide list of documents dated 13th January, 2014 and the same is exhibited as Ex. PW1/74. Original Power of Attorney dated 5th December, 2013 in favour of Mr. Kiran Kumar Gadi on behalf of Motorola Trademark Holdings, LLC, the plaintiff No. 3, is already on record of plaintiffs documents filed vide list of documents dated 13th January, 2014 and the same has been exhibited as Ex. PW1/75. It is stated that PW-1 ha
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