Back
IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
Google Llc - Appellant
Versus
Google Enterprises Pvt. Ltd. - Respondent
CS(COMM) 592 of 2018 & I.As. 18693-18694 of 2011, 15489 of 2012, 16551 of 2012
Decided On : 01-03-2023
amendment - trademark infringement - Trade Marks Act 1999, Section 2(zg), Order XIII-A of CPC, Rule 27 of Delhi High Court Intellectual Property Division Rules, 2022 - The judgment discusses the amendments sought in the plaint, trademark infringement, and the legal provisions under the Trade Marks Act 1999. The court's decision is influenced by the interpretation of the Trade Marks Act and procedural rules under CPC and IPD Rules.
Fact of the Case:
Plaintiff, a multinational technology company, sought injunction against trademark infringement and passing off by Defendants who misused the mark 'GOOGLE' and falsely claimed association with the Plaintiff. Defendants engaged in unlawful activities, misrepresentation, and infringement of Plaintiff's marks.
Finding of the Court:
The Court found Defendants guilty of infringement and passing off, as they misrepresented association with Plaintiff and unlawfully used Plaintiff's marks. The Court invoked Order XIII-A of CPC and passed a summary judgment due to absence of defense by Defendant No. 1. The Court awarded compensatory and nominal damages to the Plaintiff.
Issues: Trademark infringement, passing off, misrepresentation, non-joinder of parties, and technical grounds raised by Defendants.
Ratio Decidendi: The Court held that Defendants' use of Plaintiff's marks without authorization and misrepresentation to the public constituted infringement and passing off. The absence of defense by Defendant No. 1 allowed the Court to pass a summary judgment. The Court awarded compensatory and nominal damages based on the nature of unlawful use of Plaintiff's mark and misrepresentation by Defendants.
Final Decision: The suit was decreed in favor of the Plaintiff, and Defendants were directed to pay damages, hand over printed matter bearing the mark 'GOOGLE' for destruction, and block access to specific domain names. Plaintiff was also awarded actual costs recoverable from Defendants.
JUDGMENT
Sanjeev Narula, J. (Oral)
I.A. No. 4124/2023 (for amendment of the plaint)
1. Present application seeks to introduce amendments in the plaint, noted hereinafter:
(i) Change in name of Plaintiff from Google Inc. to Google LLC, which was in fact allowed vide order dated 15th December 2022 and to this effect, an amended memo of parties is already on record.
(ii) Additional prayer against Department of Telecommunications [hereinafter `DoT'] to permanently block Defendants' domain names, as listed in paragraph 37(iv) of the amended plaint, which form part of the subject matter of the suit.
(iii) Change in constituted attorney of Plaintiff from Mr. Rahul Sethi to Mr. Vishal Vig, whose power of attorney is already on record.
2. Given that above changes are formal in nature, the present application is allowed. Amended plaint accompanying the application, is taken on record.
3. Disposed of.
CS (COMM) 592/2018
4. Plaintiff, a multinational technology company, is the registered proprietor of the mark "GOOGLE" and variations thereof, under several classes such as Classes 16, 42, 35, and 9.
5. The Plaintiff is adversely effected by the Defendants' actions of misusing the aforementioned mark and falsely claiming an association with the Plaintiff to deceitfully mislead the public. As a result, the Plaintiff seeks a permanent injunction to restrain infringement of their marks and passing off, in addition to submission of accounts, damages, delivery up, and other remedies.
PLAINTIFF'S CASE
6. The Plaintiff conceived and adopted the mark "GOOGLE" in 1997, both as a trademark and in its corporate name. Plaintiff is widely recognised for its internet-search engine viz. "www.google.com" [hereinafter "Plaintiff's website"] which, along with its country specific domains (including "www.google.co.in", the Indian domain) receives over a hundred million unique visitors every month and reaches more than 150 countries worldwide. Plaintiff also provides a range of products and internet-based services which inter alia relate to advertising, news, navigation/maps, email, office productivity services, video-sharing. In addition, Plaintiff has established offices and R&D centres across India to provide its products and services, and develop locally relevant products. Plaintiff's products and services, including its website, bear the mark "GOOGLE" and variations thereof, including "
", details of registration of such marks are provided at page 2 to 8 of the documents filed along with the plaint and Ex. PW1/3 [hereinafter collectively referred to as "Plaintiff's mark(s)"]. Given the ubiquity of the internet and digital services around the world and India, Plaintiff's marks have built tremendous goodwill and reputation over a span of more than two decades. Around the world, the "GOOGLE" mark and its variations are associated with Plaintiff's products and services. Plaintiff generated revenue of more than USD 29 million in 2010 and has expended heavily towards sales and promotions of its products, details of which are enumerated at page 17 of the amended plaint.
7. Plaintiff's mark "GOOGLE" has acquired a high degree of inherent distinctiveness; has been used extensively over a long period of time spanning a wide geographical area; has been given tremendous publicity and attained immense popularity; it is well recognised by members of the trade and public. Trademark Registry has also included the mark "GOOGLE" in its list of well known trademarks in terms of Section 2(zg) of the Trade Marks Act 1999 [hereinafter "the Act"]. This Court in CS(OS) 317/2011 restrained a party from using the mark "GOOGLE" even in relation to different goods i.e., iodised salt[Google Inc. v. M/s Jagnath Chem Food Pvt. Ltd., decided on 05th July, 2011].
8. Defendant No. 1, is engaged in the business of trading, consultancy for allied activities etc. and is registered under the corporate name "Google Enterprises Private Limited" per the records of the Registrar of Companies, Kanpur [hereinafter
The main legal point established in the judgment is the finding of trademark infringement and passing off, leading to the award of compensatory and nominal damages to the Plaintiff.
The court affirmed the plaintiffs' rights against infringement and passing off, validating their trademarks through established goodwill and allowing for summary judgment due to the defendant's non-a....
Trademark infringement occurs when a defendant uses an identical or deceptively similar mark causing confusion to consumers. The plaintiff establishes exclusive rights through registration and extens....
Trademark infringement and passing off can be established based on the use of deceptively similar marks and failure to comply with interim injunction orders.
The court established that the unauthorized use of identical trademarks constitutes infringement and passing off, justifying a permanent injunction and awarding damages to the rightful trademark owne....
The court affirmed that prior use of a registered trademark provides substantial grounds for an injunction against similar marks, emphasizing deceptive similarity effects on consumer perception.
The main legal point established in the judgment is the entitlement of the plaintiff to a permanent injunction for passing off its mark 'SANDHI SUDHA' and the consideration of the defendants' non-rep....
The use of a registered trade mark as a keyword through Google Ads Program by a competitor constitutes trademark infringement under the Trade Marks Act, 1999.
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
