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
