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 under the Trade Marks Act, 1999.

JUDGMENT

Sanjeev Narula, J. (Oral)

I.A. 3251/2021(under Order XI Rule 5(1) r/w Section 151 of the Code of Civil Procedure, 1908 seeking discovery of documents from D-3)

1. In reply to the above-captioned application, Defendant No. 3 [Shopify Commerce Singapore Pte. Ltd.], the webhost/ service provider of the impugned website i.e., "www.thecroma.in" has furnished contact details of Defendant No. 1, as available in their records.

2. Disposed of.

CS(COMM) 577/2020

3. Mr. Sauhard Alung, counsel for Plaintiff, states that attempts have been made to serve summons on email addresses of Defendant No. 1, as provided by Defendant No. 3 in the reply to I.A. 3251/2021. However, the email has bounced back with delivery failure notifications. The other contact details such as name, mobile number etc. of Defendant No. 1, as are ex-facie fake.

4. Despite efforts on the part of the Plaintiff, it has not been possible to serve Defendant No. 1. The Court has considered directing substituted service, however, the same would be of no avail as the only ascertained contact of Defendant No. 1 are the e-mail addresses. It was incumbent upon Defendant No. 1 to ensure that its contact details are current so that it could be reached out in connection with issues relating to the impugned domain name. Not keeping the email address active indicates that Defendant No.1 is intentionally keeping out of the way for the purpose of avoiding service.

5. In the above circumstances, the Court proceeds ex-parte against Defendant No. 1.

6. Plaintiff has filed the instant suit, inter alia, seeking permanent injunction restraining infringement of its registered marks, passing off, delivery up, rendition of accounts, damages, etc. The case set out in the plaint is as under:

6.1. Plaintiff, a wholly owned subsidiary of Tata Sons Pvt. Ltd., and a part of the TATA Group, is the registered proprietor of trademark "CROMA", "[IMG]" and other formative marks [hereinafter "Plaintiff's marks"], details of which have been provided from pages 25 to 171 of the documents filed with the plaint. Plaintiff owns and manages a nation-wide retail chain, which operates through numerous physical stores and also through its website "www.croma.com" [hereinafter "Plaintiff's website"], and deals in consumer electronics and durables under the Plaintiff's marks.

6.2. Plaintiff's first CROMA store was launched in the year 2006 and since then there has been an uninterrupted and extensive use of the its marks, under which Plaintiff offers its products and services. Plaintiff has incurred significant expenditure and undertaken efforts to ensure wide publicity of its products and services under its marks. Details of such expenditure and resources expended in relation to its marks have been provided at paragraph 11 of the plaint. Plaintiff actively promotes its products through its pages on popular social media websites such as Facebook, Twitter, YouTube and Instagram, as provided at paragraph 12 of the plaint.

6.3. Due to extensive publicity and goodwill and reputation garnered by the Plaintiff's marks, considerable revenues have been generated by the Plaintiff. Approximately INR 3,535 crores were earned in 2018, as detailed in paragraph 13 of the plaint.

6.4. Plaintiff's mark "[IMG]" has also been declared a well-known trademark by the Trade Marks Registry as defined under Section 2(1)(zg) of the Trade Marks Act, 1999 vide Trade Marks Journal No. 1942 dated 24th February, 2020.

6.5. Defendant No. 1, the owner of the website, "www.thecroma.in" [hereinafter "impugned website"], is engaged in displaying, selling and offering for sale counterfeit consumer electronics under Plaintiff's mark "[IMG]". In December 2020, Plaintiff discovered the contentious website when a customer from Hyderabad lodged a complaint about a counterfeit product acquired through the website, mistakenly believing it to be Plaintiff's website. This evidence indicates that Defendant No. 1 had created the impugned website to misle