TATA VERSUS TATA GOLD

                       

COMMENT:

1.         In this Case the Hon’ble Court has held TATA to be a well known trademark. (Para 11)

2.         The Hon’ble Court, after relying upon the doctrine of dilution of trademark, has restrained the defendant from using the trademark TATA GOLD in relation to pressure cooker.(Para 12)

 

3.          As the evidence of the plaintiff has gone un rebutted, the Hon'ble Court has awarded the decree of damage also. (Para 15)

 

                        THE HIGH COURT OF DELHI AT NEW DELHI

                                       CS (OS) No. 1228/2004

                                       Date of Decision: 29.04.2013

TATA SONS LTD. & ANR. .......Plaintiff

Through: Mr. Achuthan Sreekumar, Ms.Udita, Advs.

Versus

AMIT MAHNA & ORS. ......Defendant

Through: Nemo

CORAM:

HON'BLE MR. JUSTICE M.L. MEHTA

M.L. MEHTA, J.

1. The present suit has been instituted by the plaintiffs against the defendants seeking permanent injunction restraining infringement of trademarks TATA by the defendants. The plaintiffs are also praying for an order of delivery-up of all infringing materials along with the rendition of accounts of profit illegally earned as well as damages.

2. This suit has been filed by Tata Sons Ltd., a company incorporated under the Indian Companies Act, 1913. The plaintiff has contended that it was established in the year 1917 and is the principal investment holding company of the Tata Group, which is India‟s CS (OS) No. 1228/2004 Page 1 of 9 oldest, largest and best-known conglomerate with a turnover of USD 9 Billion. The name TATA is stated to be have been derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. It is also stated that the name TATA is being used by the plaintiffs since its inception in the year 1917 and it is claimed that on account of its highly descriptive nature and pioneering activities of the founder, the name TATA has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata group, which is known for high quality of products manufactured and/or services rendered by it under the trademark/name TATA.

3. It is stated that the House of TATA comprises over 50 companies which use TATA as a key and essential part of their corporate name. Additionally, it is also contended that there are numerous overseas companies, philanthropic bodies and autonomous public institutions which are promoted by the plaintif. And that plaintiff is the registered proprietor of the trademarks pertaining to and/or comprising the word TATA in relation to various goods falling across various classes of the Fourth Schedule of the Trade Mark Rules, 2002. By virtue of the said registration, it is contended that plaintiff has the exclusive right in the said trademark and is thus entitled to the exclusive use thereof.

4. And that various companies belonging to the House of TATA dealing in goods clearly state on their products/packaging, the legend „A TATA PRODUCT‟, while those dealing in services identify themselves by the distinctive trading style of TATA. The use of the trademark TATA by various companies belonging to the House of TATA is governed by a carefully formulated policy, called the „The TATA Brand Equity and Business Promotion Scheme‟. And that the plaintiff is the registered proprietor of various TATA trade marks that are licensed through Registered User Agreements to other TATA Companies, which manufacture the goods and sell them under the said trademark(s). The Registered User Agreements have also been duly recorded with the Trade Marks Registry in India in accordance with the relevant provisions of law.

5. The plaintiff submits that as a result of extensive use of the plaintiff‟s trade mark TATA over a long period of time spanning a wide geographical area coupled with vast promotion and publicity, the trade mark TATA has acquired an impeccable and unparalleled reputation and goodwill and has come about to acquire the status of „well-known trade mark‟. It submits that reputed and well-known trade marks especially those that embody an aura of preeminent excellence and quality, such as the plaintiff‟s trade mark TATA are entitled to the highest degree of protection against any third party misuse, even in relation to different goods and/or services.

6. The plaintiff submits that in September 2004, it came across pressure cookers in the market bearing the trade mark TATA. The impugned products contained the trade name „TATA GOLD‟, which is represented in a manner wherein the mark TATA is portrayed in bold and prominent manner, while the mark GOLD is written in small print. Upon further investigation, it appeared that these goods are being manufactured and/or sold by the defendant no. 1, Mr. Amit Mahna, who is the proprietor of defendant no.2, Bali Kitchenware Industries, which is located at No. 48/1, Sayed Nangoli, New Delhi - 110041. Defendant no. 3, Mr. Hans Raj Mahna, is the proprietor of defendant no. 4, Hamnani Stores, which is located at 891-C, Chowk Qutub Road, Sadar Bazar, Delhi - 110006. The plaintiff states that it instructed the conduct of an investigation of the defendants‟ premises and that the affidavit of the investigator is annxed as ANNEXURE A. And that the defendants catalogue and price list (annexed as ANNEXURE A1 and ANNEXURE A2 respectively), reveal that the defendants are engaged in the manufacture and sale of pressure cookers under various other brandnames like MILTON and CROMPTION. The plaintiff submits that the defendants, instead of developing their own brands, are merely seeking to free-ride on the goodwill of established brands. And that the use of a mark that is phonetically and visually identical to the plaintiff‟s registered trade mark TATA amounts to infringement of the registered trade mark, as also passing off by the defendants as per the provisions of the Trade Marks Act, 1999.

7. The plaintiff states that the defendants activities are undoubtedly motivated by malafides, and that their choice of the mark TATA was not a mere coincidence but led by an ulterior motive to misappropriate and trade upon the goodwill land reputation of the plaintiff‟s trade mark. The plaintiff further states that, by being tainted at its very inception, no amount of subsequent use can cleanse the defendants‟ vice of dishonest adaptation of the mark TATA GOLD. And that by adopting the plaintiff‟s trade mark, the defendant is trying to derive an unfair advantage in the consumer market by creating the impression that the defendant‟s products emanate from the plaintiff or have some connection, nexus, association, affiliation, or endorsement with the plaintiff. And that the impugned goods are bound to confuse and mislead the public to their origin and induce them to buy the said products believing them to be originating from the plaintiff.

8. The plaintiff states that the cause of action arose for the present suit in September 2004, when it came across the impugned goods, bearing the mark TATA. And that the cause of action continues to subsist till such time the defendants are permanently restrained by an order of injunction. And that this Court has the necessary territorial jurisdiction to entertain and try the present suit as the defendants reside and carry on business/work for gain within the jurisdiction of this Court.

9. In support of its contentions, the plaintiff has also placed on record, the decisions of this Court in Tata Sons Ltd. v. A. K. Chaudhary & Anr., CS (OS) No. 842/2002 (AK Chaudhary Case) as well as Tata Sons Ltd. v. Manoj Dodia & Ors., CS (OS) No. 264/2008 (Manoj Dodia Case), where this Court has recognized the „well-known‟ status of the TATA mark. The plaintiff has also produced a table of all the cases (as cited in the table in Paragraph 20 of the plaint), that they have filed before this Court, as well as the WIPO Arbitration and Mediation Centre, with respect to the misuse of its trade mark as well as domain names. I have heard the arguments of the Counsel for the plaintiff. I have also perused through the evidence placed on record.

10.Before proceeding to decide the matter, it is pertinent to note that the Trade Marks Act, 1999 accords statutory protection to well- known marks. Section 29(4) of the Act, which is relevant in this regard is as under.

"29(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which -

(a) Is identical with or similar to the registered trade mark; and

(b) Is used in relation to goods or services which are not similar to those for which the trade mark is registered; (c) The registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark."

11.This Court in the Manoj Dodha Case (supra) has held:

"Considering that (a) the mark TATA whether word mark or device or in conjunction with other words is being used for last more than 100 years, in respect of a large number of goods and services, (b) Tata Group, which is probably the oldest and largest industrial and business conglomerate having a turnover of Rs. 96,000 crores in the year 2005-06, the Tata Group comprises a number of large companies, millions of customers are using one or more TATA products throughout India and other countries, (c) there are more than 100 registrations of the trade mark TATA either by way of word mark, or device or use of the name TATA and other words, (d) the Courts having in a number of judgments/orders recognize TATA as a well-known mark, (e) there is no evidence of any other person, holding registration of or using the trademark TATA and (f)the reputation which companies of Tata Group enjoys not only in India but in other countries, it is difficult to dispute that the trade mark TATA is a famous and well-known brand in India. I, therefore,, have no hesitation in holding that the mark TATA whether word mark or device or when used in conjunction with some other words, is a well-known trade mark, within the meaning of Section 2(z)(b) of the Trade Marks Act, 1999. The use of the trade mark TATA in relation to any goods or services, is therefore, likely to be taken as a connection between House of Tata and the goods or services, which are sold under this trade mark or a trade mark which is similar to it.

12.Further, in the AK Chaudhary Case (supra), this Court has also made pertinent observations regarding passing off under the doctrine of dilution and unfair competition. The Court observed:

"According to the doctrine of dilution, even if a person uses another's well-known trademark or trade mark similar thereto for goods or services that are not similar to those provided by such other person, although it does not cause confusion among the consumers as to the source of goods or services, it may cause damage to the well-known trade mark by reducing or diluting the trade mark's power to indicate the source."

13.In the instant case, I have perused through the report of the Local Commissioner along with the list of inventory prepared by him of the impugned goods which were first taken in his custody and later released upon superdarinama. I have also perused through the other documents placed on record. I am of the opinion that the plaintiff has established a case of passing off with respect to the defendant‟s products carrying the plaintiff‟s trade mark TATA. The impugned goods are also clearly infringing the well-known trade mark of the plaintiff.

14.The suit of the plaintiff is accordingly decreed and an order of permanent injunction restraining the defendants from manufacturing, selling, advertising pressure cookers or goods of any description bearing a trade mark that is identical or similar to the plaintiff‟s trade mark TATA. The defendants are also directed to destroy the goods and packaging material or any other printed material bearing the trade mark TATA within a period of four weeks from today.

15.With regards the relief of damages prayed for by the plaintiff for the loss of profits to the tune of at least Rs. 5,05,000/- (Rupees Five Lakh Five Thousand Only). It is pertinent to note that the defendant has been proceeded ex parte vide Order date May 6, 2005. The evidence of the plaintiff has gone un rebutted, which includes loss of business, reputation and goodwill in the market. Since the amount of damages claimed is based on assessment of the plaintiff which is unassailed, I am of the view that a sum of Rs. 5,05,000/- (Rupees Five Lakh Five Thousand Only) can be reasonably awarded to the plaintiff as compensatory for the loss of business and damage to the goodwill. Decree be drawn accordingly.

M.L. MEHTA, J.

APRIL 29, 2013