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IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
Sap Se – Appellant
Versus
Raj Punarvasi – Respondent
CS(COMM) 226 of 2020 & I.A. 5184 of 2020 (u of Order XXXIX Rule 1 and 2 r of w Sec. 151 of the Code of Civil Procedure, 1908)
Decided On : 23-01-2023
Trademark Infringement - SAP SE - [Trademark Act, 1999, Section 29, Section 51] - The court found that the defendant had committed infringement and passing off of the plaintiff's trademarks and copyrights, leading to the grant of a decree of permanent and mandatory injunction. The judgment referenced the legal provisions of the Trademark Act, 1999, particularly Sections 29 and 51, to establish the plaintiff's entitlement to statutory protection and the grant of injunction for infringement.
Fact of the Case:
The plaintiff, SAP SE, sought permanent injunction restraining infringement of trademark, copyright, passing off, unfair competition, delivery up, rendition of accounts, and damages against the defendant, who was found to have engaged in unlawful activities related to SAP products and services comprising the plaintiff's trademarks and copyrights.
Finding of the Court:
The court found that the defendant had committed infringement and passing off of the plaintiff's trademarks and copyrights, resulting in irreparable harm to the plaintiff's business, goodwill, and reputation.
Issues: The issues involved trademark infringement, copyright infringement, passing off, and unfair competition by the defendant, as well as the entitlement of the plaintiff to statutory protection and the grant of injunction for infringement.
Ratio Decidendi: The court's decision was based on the finding that the defendant had engaged in dishonest dealings with the plaintiff's trademarks and copyrights, leading to confusion and deception for customers, and resulting in irreparable harm to the plaintiff's business and reputation.
Final Decision: The suit was decreed in favor of the plaintiff and against the defendant, leading to the grant of a decree of permanent and mandatory injunction in accordance with the prayers of the plaintiff.
JUDGMENT
Sanjeev Narula, J. (Oral)
1. Plaintiff has filed the instant suit, inter alia, seeking permanent injunction restraining infringement of trademark, copyright, passing off, unfair competition, delivery up, rendition of accounts, damages, etc.
2. The case set out in Plaint is as follows:
(i) Plaintiff-`SAP SE' engaged in providing end-to-end software application solutions, is incorporated under the laws of Germany. It was established in 1972 and is the market leader in enterprise application software. It has extensive operations in India and has set up a wholly-owned subsidiary - `SAP India Private Limited'.
(ii) It has been selling and distributing its products and services under trade mark `SAP', which was coined, adopted and has been in use since 1972. Plaintiff is the registered proprietor of the mark `SAP' and its formative marks such as '[IMG]', `SAP HANA' etc. in over 75 countries, including India. Details of trademark and copyright registrations in favour of Plaintiff has been provided at paragraph no. 20 to 21 and 14 of the Plaint, respectively. Plaintiff's trademarks form an integral part of Plaintiff's trade and business. Apart from its trademark registrations, it also holds copyright registrations for its various software programs and training materials including, inter alia, `SAP HANA', `SAP Net Weaver'. Details of revenue earned by Plaintiff and expenditure incurred for advertising and promoting trademark `SAP' have been culled out in paragraph no. 18 of the Plaint.
(iii) Plaintiff extensively uses the medium of Internet to render and advertise its products and services, through its website and social media portals. By virtue of continuous, extensive and widespread use and advertisement/promotional activities - Plaintiff's trademarks have has earned substantial goodwill and reputation, which is associated worldwide with Plaintiff alone.
(iv) In 2015 - Plaintiff first learnt about use of the subject mark by Defendant No. 1-`Raj Punarvasi', an individual running a firm under the name and style of `Punarvasi Technologies' in Hyderabad offering SAP-based courses including `SAP Basis', `Netweaver', `HANA' and `S4HANA Administration'. He operated websites being - www.punarvasi.com and www.knowbasis.com wherein he displayed various SAP-based training videos which, Defendant No. 1 recorded through SAP IDES software. He also provides access to remote server to customers and methods to download pirated SAP software. He was using the marks `SAP', `SAP HANA' and `[IMG]' in relation to pirated version of Plaintiff's copyright software, certification and training materials.
(v) On 19th November, 2015, Plaintiff sent a cease-and-desist notice to Defendant No. 1, to which no response was recevied. Subsequently, on various occassions, Defendant No. 1 communicated that all SAP related content was removed from the website. In September 2019, Plaintiff came to know that Defendant No. 1 is still continuing to provide unauthorised classroom and/or online trainings and education services on SAP modules using SAP pirated software.
(vi) Such illegal and unauthorised use of aforesaid Plaintiff's trademarks on website/training materials would invariably create confusion among customers and infringes Plaintiff's trade mark and copyright registrations.
(vii) Relevant extracts from Defendant No. 1's website and related social media accounts [pages 173 to 224 of Plaintiff's documents] are given as under:
[IMG]
[IMG]
[IMG]
[IMG]
[IMG]
[IMG]
(viii) Defendant No. 1 further shared demo links and other information in relation to online training, cost of his services, installation files etc. through WhatsApp and e-mail correspondences exchanged with Plaintiff's representative, between September 2019 and January 2020, relevant extracts whereof are as under:
[IMG]
[IMG]
[IMG]
3. In the above circumstances, an ex-parte ad interim injunction was granted in favour of Plaintiff and against Defendant No. 1 vide order dated 06th July, 2020, relevant portion whereo
The central legal point established in the judgment is the entitlement of the plaintiff to statutory protection and the grant of injunction for infringement under the Trademark Act, 1999.
The central legal point established in the judgment is the protection of trademarks and copyrights under the Trade Marks Act, 1999 and the Copyright Act, 1957, and the court's power to grant injuncti....
Unauthorized use of a registered trademark constitutes infringement, and remedies include permanent injunction and costs against infringing parties.
The central legal point established in the judgment is the protection of intellectual property rights, including trademarks and copyrighted materials, under the Indian Copyright Act, 1957 and the Ind....
The central legal point established in the judgment is the protection of intellectual property rights, specifically trademarks, and the legal provisions under Section 151 and Order XXIII Rule 3 of CP....
In cases of trademark infringement and passing off, the court may grant a permanent injunction to restrain the defendant from using a deceptively similar mark and may award damages and costs to the p....
Summary judgment can be granted in commercial disputes when the defendant lacks real prospects of successfully defending the claim.
The use of a well-known trademark by a defendant for similar goods, causing public confusion, constitutes trademark infringement and passing off.
The court applied the summary judgment procedure in commercial disputes to ensure timely resolution and emphasized the need for a realistic prospect of success in defending the claim.
The intentional use of another party's trademark to deceive customers and cause irreparable harm constitutes trademark infringement and passing off, leading to statutory protection and legal remedies....
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