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2024 Supreme(Del) 126
IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
Sap Se - Appellant
Versus
Vtech Soft Solutions & Ors. - Respondents
CS(COMM) 110 of 2020 & I.A. 3498 of 2020, I.A. 7098 of 2020
Decided On : 29-01-2024
Important Points
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 injunctions and decrees in cases of infringement and passing off.
Subject
Intellectual Property Law - Trademark Infringement
Headnote
Trademark Infringement - Software Application Solutions - [Trade Marks Act, 1999, Copyright Act, 1957] - The court found that the defendant engaged in trademark infringement and passing off of the plaintiff's trademarks and copyrights by offering pirated software and unauthorized training on technical and functional modules of SAP. The court granted a permanent injunction in favor of the plaintiff and decreed the suit against the defendant.
Fact of the Case:
The plaintiff, a software solutions provider, filed a suit seeking injunction restraining infringement of trademarks and copyright, passing off, unfair competition, and other reliefs against the defendant. The plaintiff alleged that the defendant engaged in unauthorized use of the plaintiff's trademarks and copyrights by offering pirated software and unauthorized training on SAP modules.
Finding of the Court:
The court found that the defendant committed infringement and passing off of the plaintiff's trademarks and copyrights. Despite repeated notices, the defendant continued its unlawful activities, causing confusion and deception for customers and resulting in irreparable harm to the plaintiff's business and reputation.
Issues: The issues involved trademark infringement, passing off, and unauthorized use of copyrighted software and training materials by the defendant.
Ratio Decidendi: The court held that the plaintiff had valid trademark and copyright registrations and was entitled to statutory protection, including the grant of injunction for infringement. The defendant's dishonest dealing in SAP products and services, misrepresentation as a consultant/trainer, and continued engagement in unlawful activities led to the court's finding of infringement and passing off.
Final Decision: The court decreed the suit in favor of the plaintiff and granted a permanent injunction against the defendant in terms of the prayers sought by the plaintiff.
Mr. Ranjan Narula, Mr. Shashi P. Ojha, Ms. Shivangi Kohli and Ms. Aishani Singh, Advocates, for the Plaintiff.
None, for the Defendants.
JUDGMENT
Sanjeev Narula, J. (Oral)
1. Plaintiff has filed the instant suit, inter alia, seeking permanent injunction restraining infringement of trademarks and copyright, passing off, unfair competition; and 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 `
', `SAP HANA' etc. in over 75 countries, including India. Details of trademark and copyright registrations in favour of Plaintiff has been provided at Paragraph Nos. 14, 20 and 21 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 related to software such as `SAP HANA', `SAP CRM' and `SAP ABAP'. Details of global revenue earned by Plaintiff and expenditure incurred worldwide for advertising and promoting trademark `SAP' have been detailed 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) Plaintiff first learnt about the infringing activities conducted by Defendant No. 1 in May 2019, whereby it was learnt that the said Defendant was offering pirated software with remote SAP server access through the website
(v) In last week of May 2019, Plaintiffs representative contacted Defendant No. 1 via email provided on the Impugned Website (info@vtechsoft.in) to enrol for Defendant No. 1's SAP BASIS Course and enquire about the Defendant No. 1's infringing activities. Plaintiff's representative attended the demo session in second week of June 2019 through the link shared by the Defendant No. 1. Screenshots of the demo session and the aforesaid email communications have been provided in the Plaint as under:
(vi) On 2nd August 2019, Plaintiff sent a cease and desist notice ("C&D Notice") through its counsel, notifying Defendant No. 1 about copyright in SAP software and other confidential information, training and educational materials, and called upon the said Defendant to cease infringement of its copyright and trademarks through the online courses. As no response to the C&D Notice was received by Plaintiff, a follow up letter was sent via e-mail and courier, asking Defendant No. 1 to comply with the requisitions stated in the C&D Notice and provide their resp
