Trade Marks Act, 1999 Section 29 – Civil Procedure Code, 1908 – Order 39 Rule 1, 2 – Trademark – Identical mark – Infringement – Injunction, granted the plaintiff has been able to prove the defendants adoption and using of trademark, trade dress, deceptively similar domain name, unequivocally amounts to the infringement of the plaintiffs registered domain name, trademark, trade dress etc and amounts to passing of their goods and business as this is without authorization/affiliation by the plaintiffs and hence, the plaintiffs is entitle to a decree for reliefs prayed

 

2018  (75) PTC  607 (DELHI)

HEAD NOTE

Trade Marks Act, 1999 Section 29 – Civil Procedure Code, 1908 – Order 39 Rule 1, 2 – Trademark – Identical mark – Infringement – Injunction, granted the plaintiff has been able to prove the defendants adoption and using of trademark, trade dress, deceptively similar domain name, unequivocally amounts to the infringement of the plaintiffs registered domain name, trademark, trade dress etc and amounts to passing of their goods and business as this is without authorization/affiliation by the plaintiffs and hence, the plaintiffs is entitle to a decree for reliefs prayed

 

IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                           Reserved on: 30th July, 2018

Pronounced on: 6th August, 2018

 

+     CS(COMM) 225/2018

 

TATA SONS LTD & ANR                                ….. Plaintiffs

Through :             Mr.Pravin Anand, Ms.Achuthan

Sreekumar & Mr.Akshay Agarwal,

Advocates.

 

versus

 

KRISHNA KUMAR & ORS.                   ….. Defendants

Through  None being ex parte.

 

CORAM:

HON’BLE MR. JUSTICE YOGESH KHANNA

 

YOGESH KHANNA, J.

  1. The plaintiff has filed this suit for permanent injunction, infringement of registered trademark, passing off, damages, rendition of accounts, delivery up; and transfer of domain name against the defendants.
  2. The brief facts leading to the filing of this suit, as alleged, are:-
  3. a) the Plaintiff No.l was established in the year 1917 as a body corporate, is the promoter and principal investment holding company of the House of TATA, which is India’s oldest, largest and best-known business conglomerate, with a turnover of about US$103billion (around Rs.624,757 billion) in 20l3-14, with 67% of this coming from businesses outside India. The Plaintiff is one of India’s most trusted business houses and the name/trademark TATA, derived from the surname of the founder Jamsedji Nusserwanji Tata, is a household name synonymous with excellence in several fields of business activity;
  4. b) Plaintiff No.l and other Tata Group companies/ subsidiaries are India’s oldest and largest private-sector employer, consisting of over 100 major operating companies, 32 of which are listed on stock exchanges and they have a combined market capitalization of about $ l34.9 billion (as on 30.10. 2014), and a shareholder base of about 4 million. The Tata companies have employed over 580,000 people worldwide;
  5. c) the House of TATA was named as the top and the most valuable Indian brand for the year 2014 by Omnicom Group’s Inter brand India. Further, the TATA brand has also been ranked 34 th by Brand Finance, (an independent company focused on the management and valuation of brands) in its Global 500 Finance Report dated March 2014.The Plaintiff No.1 was also ranked in the year 2009 as the world’s 11th most reputed company according to a study compiled by United States based Reputation Institute. Documents pertaining to the ‘well-known’ status of the TATA name/mark highlighting the immense reputation and goodwill enjoyed by the Plaintiff No.1 and its group Companies have been filed in the present proceedings by the Plaintiffs;
  6. d) plaintiff No.2 is a subsidiary of Tata Capital Limited, which in turn is a subsidiary of Plaintiff No.1. The Plaintiff No.2 is registered with the Reserve Bank of India as a Systemically Important Non Deposit Accepting Non Banking Financial Company (NBFC) and offers fund and fee-based financial services to its customers, under the Tata Capital brand;
  7. e) plaintiff No.2 is a trusted and customer centric service provider and caters to the diverse needs of the retail, corporate and institutional customers across various areas of business namely Commercial Finance, Infrastructure Finance, Wealth Management, Consumer Loans including distribution and marketing of Tata Cards. That Plaintiff No. 2 has its websites illustrating its various financial services/ products located at www.tatacapitalfinancialservices.com and www.tatacapital.com;
  8. f) plaintiff No.1 is the proprietor of the trademark TATA by virtue of priority in adoption since the year 1917, long, continuous and extensive use and advertising, and the reputation consequently accruing thereto in the course of trade. Plaintiff No.1/ its subsidiaries and Group companies promoted by them have exclusively used TATA as a trademark so that it is uniformly perceived as indicative of the source of the products/services i.e. the Plaintiff No.1 and the companies promoted by the House of TATA. The Plaintiff No.1 being the proprietor of the name/ trademark TATA holds exclusive rights in the said trademark and is entitled to take action against unauthorized use thereof by third parties for manufacture/ sale/offering of any goods or services and even incorporation in whole or in part in domain names;
  9. g) in addition to the common law rights that have accrued to the Plaintiff No.1 and its subsidiaries/group companies by virtue of the aforesaid facts, it is also the registered proprietor of the name/mark ‘TATA’, ‘T within a circle device’ (as shown below) as well as several other TATA-formative trademarks in relation to various goods across various classes
  10. h) tabulated list of the Plaintiffs’ trademark registrations under the various provisions of the Trademark Act, 1999 for the mark TATA as well as various other permutations/combinations thereof with print outs from the website of the Trademark Registry for some of the said registrations are filed in the present proceedings by the Plaintiffs. The Plaintiff No.1 also owns trademark registrations for the word TATA in over 50 countries besides India. A tabulated list of the Plaintiffs’ trademark registrations across the world have been filed in the present proceedings by the Plaintiffs. The PlaintiffNo.1, its subsidiaries/ group companies are registrants of various domain names containing its trade/service mark TATA. Details of domain names have been extracted in Para 22 of the Plaint;
  11. i) as a result of the continuous and extensive use of the plaintiff’s trademark TATA over a long period of time spanning a wide geographical area coupled with extensive promotion and publicity, the said trademark enjoys an unparalleled reputation and goodwill and has acquired the status of a “well-known” trademark;
  12. j) this is substantiated, inter alia, by the fact that this Court has consistently protected the trademark TATA against misuse by various persons/firms/ companies engaged in manufacture and/or sale of goods as diverse as pressure cookers, lottery tickets, cutlery, newspapers, etc. and for online activities or mere registration of domain names;
  13. k) the Plaintiffs’ trademark TATA and the ‘T’ within a circle Device mark have been acknowledged as a well-known trademark by this Court in various judgments and hence the trademark TATA and the ‘T’ within a circle Device mark have been included in the list of well-known trademarks;
  14. l) plaintiff No.1/its subsidiaries/Group Companies are also the proprietors of the trademarks. TATA the ‘T’ within a circle Device /TATA CAPITAL in Class 36, the relevant class of the present suit and the same has been extracted in Paragraphs 15 and 16 of the Plaint. The Plaintiffs state that they are also registered proprietor for the said marks in Classes 16 and 35;
  15. m) present case pertains to the impugned domain name www.tatafinserve.com. and the website which is parked on the said domain name as well as the defendants’ use of the well-known trademark TATA of the Plaintiffs as its corporate name i.e. M/s Tata Finserve Pvt. Ltd. The impugned website hosted on the impugned domain name also makes unauthorized use of the ‘T’ within a circle Device in which the Plaintiffs have both statutory and common law rights. The said domain name has been registered by the Defendants on 20.09.2014;
  16. n) defendant No.1, i.e. Krishna Kumar is the owner of the Defendant No.2 i.e. M/s Tata Finserve Pvt. Ltd. and also the registrant of the impugned domain name www.tatafinserve.com. Defendant No.3 is one Rajesh who appears to be the holder of the bank account no.0916000102149571 held with the Defendant No.4 bank i.e. Punjab National Bank which is a pro-forma party. The Defendant No.5 is the domain name registrant of the domain www.tatafinserve.com which is also a pro-forma party;
  17. o) defendant No.6 is one Rajesh Singh who is the holder of bank account No.0948000102798871 held with the Defendant No.4 bank and the Defendant No.7 is one Ravi Kumar who is the introducer of both the above mentioned accounts where the Defendants No.1,2,3 and 6 were depositing the monies fraudulently extorted from the unwary public by floating loan scams claiming to be part of the TATA Group / the Plaintiffs;
  18. p) sometime since November, 2014 the Defendant Nos.l and 2 are portraying to unwary customers that they are a prominent group company of the Plaintiff No.1 and are engaged in the business of providing multilayered financial insurance services identical to that of Plaintiff No.2 namely Tata Capital Financial Services Limited;
  19. q) the said Defendants can be contacted for financial investments on the email address i.e. T within a circle Device mark provided on the website hosted on the impugned domain name www.tatafinserve.com i.e. doc@tatafinserve.com; Defendant Nos.

1& 2 appear to be working in nexus with Defendant No 3, one Mr.Rajesh, the holder of Account No.0916000102149571 which is registered Punjab National Bank located at Sidhi Apartment, Tilak Road, Ghatkopar (East), Mumbai Maharashtra 400077. The Defendant Nos. 1 and 2 are asking unwary public to deposit money in the account No.0916000102149571 which is in the name of the Defendant No.3 and which account is registered and maintained at the Pro-Forma Defendant No.4 bank;

  1. r) a bare perusal of the website of the Defendants www.tatafinserve.com clearly reveals the striking resemblance it bears to the Plaintiffs’ website namely www.tatacapitalfinancialservices.com and www.tatacapital.com.;
  2. s) the Defendants use the Plaintiffs’ well-known trademark TATA as part of its domain name www.tatafinserve.com and further use the name M/s Tata Finserve Pvt. Ltd. as the part of its trading corporate name similar to the name of the Plaintiff Group Company; namely Tata Capital Financial Services Limited;
  3. t) the website of the Defendants hosted on the impugned domain name bears a striking resemblance to the website of the Plaintiff No.2, www.tatacapitalfinancialservices.com. in terms of layout, prominent colour scheme and manner of depiction of services/ products offered. The Defendants and the Plaintiff No.2 are involved in identical business activities i.e. in the business of providing loans, insurance, financial services and other related services;
  4. u) the homepage of the website of the Defendants as hosted on the impugned domain name claims falsely “TATA Finserve, a constituent of CNX Nixy Junior and MSCI India, part of the TATA Group;
  5. v) the Defendants have further unauthorizedly used the Plaintiffs’ “T within a circle” Device mark in which the Plaintiffs have overwhelming statutory and common law rights; w) the Defendants have blatantly and without seeking requisite permissions made references to other group entities like TATA MUTUAL FUND, TATA LIFE;
  6. x) the said illegal activities of the Defendants are bound to cause incalculable harm and injury to the Plaintiffs, their business and reputation. All profits earned by the defendants in pursuance of its illegal activities are the plaintiffs losses and amount to unjust enrichment. The Court is therefore satisfied that the Plaintiffs have made a strong prima-facie case for the grant of an ex-parte ad interim injunction as prayed for, in their favour. Further it also appears in the absence of such interim order, the Plaintiffs will suffer irreparable loss and injury, hence this suit.
  7. Upon due service and failure to appear in Court, the defendants No.1, 2, & 3 were proceeded ex parte and matter was posted for ex parte evidence vide order dated 23.02.2015. Defendants No.4, 6 & 7 were also proceeded ex parte vide order dated 18.04.2017. Defendant No.5 was deleted vide order dated 12.09.2017.
  8. During the course of evidence, the plaintiff has examined sole witness PW1 Shri R.Sri Raman who tendered his affidavit of evidence as Ex.PW1/A and relied upon the documents Ex.PW1/1 to Ex.PW1/27as well as Mark A to Mark M. Since the originals of Ex.PW1/2, Ex.PW1/7, Ex.PW1/8, Ex.PW1/10, Ex.PW1/11, and Ex.PW1/18 were not produced during evidence; all 06 documents were de-exhibited and were marked as Mark N to Mark S.
  9. Before proceeding further, let me go through the documents exhibited by the witness. Ex.PW1/1 is power of attorney by plaintiff No.1 in favour of the witness; Ex.PW1/3 is the attorney letter dated 08.05.2017; Ex.PW1/4 is the letter dated 03.04.2012 by the plaintiff No.2 in favour of witness; Ex.PW1/5 is the certificate of incorporation of plaintiff No.1; Ex.PW1/6 is the MCD property tax receipt in favour of plaintiff No.1; Ex.PW1/9 is the extract of BRAND NAME; Ex.PW1/12 is the article in THE WEEK; Ex.PW1/13 is extract of FORTUNE magazine; Ex.PW1/14 is the activities of the plaintiff during the year 2014-15; Ex.PW1/15 is the financial highlights of plaintiff; Ex.PW1/16 and Ex.PW1/17 are the print out/extracts from the website of the plaintiff; Ex.PW1/19 is the original trademark registration certificate; Ex.PW1/20 is the print out from the Trademark Registry, Government of India; Ex.PW1/21 is the fee receipt of Mumbai Trademark Registry; Ex.PW1/23 is the print out of WHO article; Ex.PW1/24 is the print out of email received from different members of public about the illegal activities of the defendants; Ex.PW1/25 is print out from the website of the defendants; Ex.PW1/26 is the account details of the defendant No.4; and Ex.PW1/27 is the affidavit in the form of the requisite certification under Section 65Bof the Indian Evidence Act, 1872 pertaining to the different electronic records in the form of printout, copies and extracts of records as mentioned above.
  10. The acts of the defendants in adopting and using the identical/ deceptively similar impugned mark and dealing in the goods which are identical to the goods of the plaintiffs certainly has caused irreparable injury to the plaintiffs.
  11. It is settled law in infringement cases, if the defendant’s mark is closely, visually and phonetically similar, then no further proof is necessary as was held in Kaviraj Pandit Durga Dutt Sharma vs Navarattana Pharmaceutical Lab. AIR 1965 SC 980.
  12. In Mex Switchgears Pvt Ltd vs Max Switchgears Pvt Ltd CS (OS) 1299/2013 this Court observed the essential features of rival marks are to be considered in determining infringement.
  13. From the perusal of the record above, the plaintiff has been able to prove the defendants adoption and using of trademark, trade dress, deceptively similar domain name, unequivocally amounts to the infringement of the plaintiffs registered domain name, trademark, trade dress etc and amounts to passing of their goods and business as this is without authorization/affiliation by the plaintiffs and hence, the plaintiffs is entitle to a decree for reliefs prayed in sub paras (i) to (iii), (v) & (vi) of prayer clause (para No.65)of the plaint viz.:-

(i) An order for permanent injunction restraining the Defendants their partners or proprietors, as the case may be, their officers, servants and agents from, selling, offering for sale, advertising, directly or indirectly dealing in the business of providing loans, insurance, financial services and other related services under the name and style of Tata Finserve Pvt. Ltd. / Tata Finance Corporation Ltd. / Tata Finance Services and from using the domain and website www.tatafinserve.com and from using the mark TATA and the “T within a circle” device mark and any other mark / name deceptively similar or identical to the Plaintiffs registered TATA/”T within a circle” device marks amounting to infringement of the registered trademarks of the Plaintiffs mentioned in paragraph 15 and 16 of the instant plaint as well as the other registered marks as mentioned in the list of TATA word mark and “T within a circle” device mark registrations which lists have been filed in the present proceedings;

(ii) an order for permanent injunction restraining the Defendants, their partners or proprietors as the case may be, their officers servants and agents from, selling, offering for sale, advertising, directly or indirectly dealing in the business of providing loans, insurance financial services and other related services under the name and style of Tata Finscrve Pvt. Ltd. / Tata Finance Corporation Ltd. / Tata Finance Services and from using the domain and website www.tatafmserve.com and from using the mark TATA and the “T within a circle” device mark and any other mark / name deceptively similar or identical to the Plaintiffs registered TATA, “T within 8 circle” device marks amounting to passing off of the Defendants’ services as that of the Plaintiffs;

(iii) an order of permanent injunction restraining the Defendants his partners or co- proprietors, as the case may be, his officers, servants and agents for and on their behalf etc. from engaging in any act whatsoever that will result in the dilution and tarnishment of the well known trademark/device namely TATA the “T within a circle” device of the Plaintiffs,

(v) directing the Proforma Defendant No.4 to permanently freeze the Account Nos.0916000102149571 and 0948000102798871 maintained by the Defendants with Proforma Defendant No.4;

(vi) An order of delivery up of all infringing material (tangible and intangible) if any to the Plaintiffs for purposes of destruction and/or erasure.

  1. The suit is decreed against the defendants (except defendant No.5) in terms of prayers above and domain name www.tatafinserve.com be transferred to Petitioner No. 1.
  2. The plaintiffs have also suffered immense loss to goodwill and reputation and hence are entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages.
  3. The learned counsel for the plaintiff on the issue of punitive and compensatory damages has relied upon Hindustan Unilever Limited vs. Reckitt Benckiser, 207(2014) DLT 713(DB) wherein reliance was placed on Rookesv Barnard, [1964] 1 All ER 367.
  4. The plaintiff claimed rendition of accounts of profit illegally earned by defendants or in the alternate damages to the extent of 20,05,000. The plaintiffs rely upon Jockey International Inc & Anr vs. R. Chandra Mohan & Ors211 (2014) DLT 757 which read as under:-

“43. I am in agreement with the aforesaid submission of learned counsel for the plaintiffs that damages in such cases must be awarded and a defendants, who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of court proceedings. Any view to the contrary would result in a situation where a defendants who appears in Court and submits its account books would be liable for damages, while another defendants who, chooses to stay away from court proceedings would escape the liability on account of failure of the availability of account books. A party who chooses not to participate in court proceedings and stays away must, thus, suffer the consequences of damages as stated and set out by the plaintiffs. There is a larger public purpose involved to discourage such parties from indulging in such acts of deception and, thus, even if the same has a punitive element, it must be granted. R.C. Chopra, J. has very succinctly set out in Time Incorporated’s case (supra) that punitive damages are founded on the philosophy of corrective justice.”

  1. Under the given facts and circumstances of this case where the defendants reclused themselves from the proceedings, cannot be permitted to enjoy the benefits of evasion or covert priorities as has been using the domain websites and have been infringing the plaintiffs’ trademark certainly makes the defendants liable to pay the damages to the plaintiffs. Hence, a decree for a sum of 10.00 Lac in favour of the plaintiffs and against defendants No.1 to 3 is also passed on account of infringing the registered marks, trade dress and violating interim order. The plaintiffs shall also be entitled to interest @ 10% pa on the damages so awarded from the date of filing of the suit till the date of realisation. Costs of the suit is also awarded to the plaintiff and against the defendants No.1 to 3. The defendants No.1 to 3 are jointly and severally liable to pay the damages and costs to the plaintiff. Decree Sheet be drawn.

YOGESH KHANNA, J AUGUST 06, 2018 M

 

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