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2014 Supreme(Del) 3368
IN THE HIGH COURT OF DELHI
G.S. Sistani, J.
Tata Sons Limited and Others - Appellants
Versus
Shashi Prakash Singh and Others - Respondents
CS (OS) 674 of 2008
Decided On : 11-09-2014
For the Appellant :Achutan Kumar, Karan Kumar Kamra, Advocates
The trademark TATA is a well-known mark and the defendant's use of the domain name TATANANOINDIA.COM amounts to infringement of the plaintiff's statutory rights in the trademark.
Headnote:
Trade Mark - Infringement - Trade Marks Act, 1999 - Section 2(1)(zg), Section 29(1), Section 29(2) - The court found that the trademark TATA is a well-known mark and the defendant's use of the domain name TATANANOINDIA.COM, which is phonetically and visually identical to the plaintiff's registered trademark TATA, amounts to infringement of the plaintiff's statutory rights in the trademark. The defendant's use of the impugned domain name is a dishonest and malafide attempt to derive unfair advantage by causing confusion and deception in the minds of the public, leading to infringement of the plaintiff's trademark TATA. The court granted a decree of permanent injunction against the defendant from using the domain name TATANANOINDIA.COM and awarded damages to the plaintiffs.
Fact of the Case:
Plaintiffs filed a suit for permanent injunction restraining infringement of Trade mark, Passing Off, Damages, Rendition of accounts and Delivery Up against the defendant for using the domain name TATANANOINDIA.COM, which was phonetically and visually identical to the plaintiff's registered trademark TATA.
Finding of the Court:
The court found that the trademark TATA is a well-known mark and the defendant's use of the domain name TATANANOINDIA.COM amounts to infringement of the plaintiff's statutory rights in the trademark. The defendant's use of the impugned domain name is a dishonest and malafide attempt to derive unfair advantage by causing confusion and deception in the minds of the public, leading to infringement of the plaintiff's trademark TATA.
Issues: Infringement of Trade mark, Passing Off, Damages, Rendition of accounts and Delivery Up.
Ratio Decidendi: The court held that the defendant's use of the domain name TATANANOINDIA.COM, which is phonetically and visually identical to the plaintiff's registered trademark TATA, amounts to infringement of the plaintiff's statutory rights in the trademark. The defendant's use of the impugned domain name is a dishonest and malafide attempt to derive unfair advantage by causing confusion and deception in the minds of the public, leading to infringement of the plaintiff's trademark TATA.
Final Decision: The court granted a decree of permanent injunction against the defendant from using the domain name TATANANOINDIA.COM and awarded damages to the plaintiffs.
JUDGMENT :
G.S. Sistani, J.
Plaintiffs have filed the present suit for permanent injunction restraining infringement of Trade mark, Passing Off, Damages, Rendition of accounts and Delivery Up.
2. Summons in the suit were issued on 11.04.2008. Since the defendant no. 1 could not be served through ordinary service despite repeated efforts, the plaintiffs filed I.A No. 10187/2011 under Order v. Rule 20 CPC for substituted service. The said application was allowed on 08.09.2011 and the defendant no. 1 was directed to be served by way of publication. On 28.02.2012 court noticed that the defendant no. 1 was served in the newspaper "Hindustan Times" dated 10.11.2011 was also placed on record. Since none appeared on behalf of the defendant no. 1 despite service through publication, vide order dated 13.04.2012 the defendant no. 1 was proceeded ex parte.
3. Counsel for the plaintiffs submits that defendant no. 2 is a proforma party and that service of defendant no. 2 is not required. Plaintiffs were also directed to file ex parte evidence by way of affidavit which was taken to be complete on 02.07.2014.
4. Plaintiffs have filed affidavit by way of evidence of Mr. V. Gurumoorthi (PW1), the Constituted Attorney of the Plaintiff No. 1 Company. Copy of power of attorney and a copy of board resolution in favor of PW1 have been exhibited as Ex. PW 1/1 and Ex. PW1/2. PW1 has deposed that the plaintiff no. 1, Tata Sons Limited is a company duly incorporated under the Indian Companies Act, 1913 having its registered office at Bombay House, 24 Homi Mody Street, Mumbai 400 001 and also conducts business at Jeevan Bharti Building, 10th Floor, Tower 1, 124 Connaught Circus, New Delhi 110 001. A copy of the certificate of incorporation of the plaintiff company has been exhibited as Ex. PW 1/3.
5. PW1 has also deposed that the plaintiff no 1, Tata Sons Ltd. was established in the year 1917 as a body corporate and is the principal investment holding company of the TATA Group', which is India's oldest, largest and best-known conglomerate, with a turnover of over $83.3 billion (around Rs. 3,796.75 billion) in 2010-11, with 58 per cent of this coming from business outside India. PW1 has further deposed that the plaintiff no.1 is one of India's most trusted business houses and the name/trademark TATA, derived from the surname of the founder Jamsetji Nusserwanji Tata is a household name synonymous with excellence in almost every field of business activity.
6. PW1 has next deposed that the enterprises promoted by TATA have laid the foundation in the industrial core sectors, pioneering the iron & steel, textiles, power, chemicals, hotels and automobile industries in India and keeping pace with the changing global scenario, TATA branched out into computers and computer software, electronics, telecommunications, financial services, mutual funds, tea and publishing. PW1 has also deposed that for the year 2006, Forbes, an American publishing and media company, has ranked TATA Group at the 20th position among the world's most reputed companies and as the largest Indian group in terms of revenues and market capitalization and the TATA Group is the only Indian group or company to be listed among top 20 companies of the world in terms of corporate reputation.
7. PW1 has further deposed that the TATA Group has been ranked 6th in the list of World's 50 Most Innovative Companies by Business Week, for the year 2008 and TATA brand has also been ranked 57th among top 100 brands worldwide, listed by Brand Finance, an independent company focused on the management and valuation of brands. Few of the documents pertaining to the "well known" status, reputation and goodwill enjoyed by the plaintiff company like photocopies of extracts from newspaper articles, magazine write-ups pertaining to the House of TATA and pamphlets issued by the Trade Marks Registry showing TATA as a well-known trademark have been marked as Mark C and Mark D respectively. Also copy of the original compendium on
