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*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1767/2009
Decided on 1st May, 2012
TATA SONS LIMITED ..... Plaintiff
Through :Mr. Pravin Anand, Adv.
versus
MR. ATUL TIWARI & ANR. ..... Defendants
Through : Ex-parte
Coram:
HON'BLE MR. JUSTICE A.K. PATHAK
A.K. PATHAK, J. (ORAL)
1. Plaintiff has filed the present suit for permanent injunction for restraining the defendants from infringing the registered trademark of plaintiff, passing off, damages, rendition of accounts, delivery up etc. Plaintiff has filed this suit through its constituted attorney Mr. V. Gurumoorthi.
2. It is alleged that plaintiff was established in the year 1917 as a body corporate. Plaintiff is a principal investment holding company of the "Tata Group", which is India's oldest, largest and best known conglomerate with turnover of over `251,543.00 crores CS(OS) 1767-2009 Page 1 of 10 during the financial year 2007-08. Plaintiff is one of India's most trusted business houses and the name as well as trademark "TATA", which is derived from the surname of the founder Jamsetji Nusserwanji Tata, is a household name synonymous with excellence in almost every field of business activity. Since its inception in the year 1917, plaintiff has been continuously and consistently using the trademark and trade name "TATA" which is a rare patronymic name possessing the distinctiveness of an invented word for its own business activities and those of companies promoted by it. The use of trademark and trade name "TATA" by the plaintiff's predecessors in business relates back to 1868. The trade name "TATA" has consistently been associated with conglomeration of companies forming the "TATA Group", colloquially also referred to as the "House of TATA", which consists over hundred companies of which over 50 companies use mark "TATA" as key and essential part of their corporate name.
3. Plaintiff, being proprietor of trademark "TATA", enjoys exclusive rights in the said trademark and is entitled to take action against unauthorized use thereof by any third party for its goods or services. Plaintiff has international presence. Plaintiff as well as CS(OS) 1767-2009 Page 2 of 10 its sister concerns are proprietors of several trademarks comprising of or containing the word "TATA", which have been registered under Classes 3 and 9. Details of the registration have been mentioned in para 8 of the plaint.
4. Plaintiff has alleged that defendant no. 1, Mr. Atul Tiwari is proprietor of M/s. Bihar Battery located at Patna. Defendant no. 2 Mr. Bablu Tiwari is the proprietor of M/s. Gold Battery. In the month of July, 2009, plaintiff received information regarding availability of counterfeit Tata batteries in Patna. Services of professional Investigator were engaged on 20th August, 2009. Investigator visited Kankarbagh Area in Patna and noticed defendants indulging in selling of counterfeit batteries bearing mark and logo of "TATA". Investigator even purchased sample batteries from the defendant no. 1 against a cash memo. He also collected original business cards of the defendant nos. 1 and 2. Various other shops were also found dealing in batteries bearing the trade name "TATA".
5. Plaintiff's case is that the use of plaintiff's trade mark/ name "TATA" by the defendants on the batteries was sufficient to create confusion and deception in the minds of purchasing public and CS(OS) 1767-2009 Page 3 of 10 members of trade being misled in purchasing such counterfeit batteries taking it to be that of plaintiff, inasmuch as, this will also tarnish the image of plaintiff. Act of the defendants in using the trade name "TATA" also amounts to infringement of mark of the plaintiff.
6. While issuing summons to the defendants, Court also appointed a Local Commissioner with the direction to visit the premises of defendant nos. 1 and 2 and to make an inventory of infringing goods bearing the trade name "TATA" or any other mark deceptively similar to that of the plaintiff's trademark and thereafter to take into custody all the products, labels, stationery, blocks, dies, packaging material, cartons, literature and all printed matter bearing the impugned trademark "TATA". Local Commissioner was directed to seal all the materials containing the infringing products of the plaintiff and to release the same to the defendants or their representative, on superdari. Pursuant to the said order, Local Commissioner visited the said premises of defendants. As regards defendant no. 1, 46 batteries bearing trademark "TATA" were found in his shop. Same were sealed by the Local Commissioner and handed over to defendant no. 1 on CS(OS) 1767-2009 Page 4 of 10 superdari. Premises of defendant no.2 was found locked.
7. Despite service, defendants did not enter appearance in court and have been proceeded against ex-parte. Defendant no. 1 was proceeded against ex-parte on 18th November, 2009; whereas defendant no. 2 was proceeded against ex-parte on 7th March, 2011.
8. Plaintiff has led ex-parte evidence. Plaintiff has examined PW1 Mr. V. Gurumoorthi as its witness, who has tendered his affidavit in evidence. PW1 has corroborated the averments made in the plaint, which have been reproduced in the preceding paras hereinabove. He has also proved the documents. Power of Attorney and the Board Resolution has been proved as Ex. PW1/1 and Ex. PW1/2. Certificate of incorporation of the plaintiff has been proved as Ex. PW1/3. Original receipt issued by the Municipal Corporation of Delhi has been proved as Ex. PW1/4. Copy of ledger book maintain by Tata Services Ltd. has been proved as Ex. PW1/5. Write-up dated 24th May, 2009 titled "T for trust" appearing in "The Week" magazine, wherein plaintiff has been acknowledged as world's 11th most reputed companies has been proved as Ex. PW1/6. List of well-known trademarks issued by the Controller General of Patents, Designs and Trade Marks CS(OS) 1767-2009 Page 5 of 10 acknowledging the plaintiff's trademarks "TATA" and the "T within a circle device", has been proved as Ex. PW1/7. Computer generated print-outs have been proved as Ex. PW 1/16 and PW 1/17. Original affidavit of the Investigator has been proved as Ex. PW1/19. Photographs of the sample batteries purchased from M/s. Bihar Battery have been proved as Ex. PW1/20. Original cash memo dated 2nd August, 2009 issued by M/s. Bihar Battery has been proved as Ex. PW1/21. Business card of M/s. Bihar Battery has been proved as Ex. PW1/22. Business card of M/s. Gold Battery has been proved as Ex. PW1/23. Report of the Local Commissioner has been proved as Ex. PW1/25.
9. I have heard the counsel for plaintiff and have perused entire material on record and am satisfied that the plaintiff has succeeded in proving that it is the proprietor of registered trademark "TATA". In CS (OS) No. 1922/2003 titled Tata Sons Limited vs. Suresh Jain and Ors. decided on 14th September, 2004 a Single Judge of this Court has observed that the trademark "TATA" has become household name not only in India but throughout the world, therefore, it is well-known trade mark as contemplated under The Trademark Act, 1999 ("the Act", for short). In CS (OS) No. CS(OS) 1767-2009 Page 6 of 10 842/2002 titled Tata Sons Limited vs. A.K. Chaudhary & Anr. decided on 6th April, 2009 it has been observed that "TATA" is well-known trademark within the meaning of Section 2(zg) of the Act on account of its distinctiveness and residual reputation and cannot be appropriated by any party in India in relation to any merchandise goods/services/trade name.
10. Section 29(1) of the Act envisages that a registered trademark is infringed by a person who, is neither a registered proprietor nor has permission to use the trademark, uses such trade mark in the course of trade, a mark which is identical with, or deceptively similar to the registered trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. Subsection 2 of Section 29 of the Act further provides that a registered trademark is infringed by a person, who is neither a registered proprietor nor has permission to use mark, in the course of its trade uses the same, which because of its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark or its similarity to the registered trade mark and the identity or similarity CS(OS) 1767-2009 Page 7 of 10 of the goods or services covered by such registered trade mark or its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Since the trademark "TATA" is a well-known trademark, thus, the use of aforesaid mark by the defendants on the products being sold by them will constitute infringement within the meaning of Section 29 (4) of the Act.
11. Plaintiff by leading sufficient evidence has succeeded in proving that defendants are using mark "TATA", inasmuch, material seized by the Local Commissioner also supports this fact as the batteries had been seized from the shop of defendant no. 1. Defendants have also not come forward to controvert the evidence led by the plaintiff, inasmuch as, have chosen not to contest the matter. In my view, the plaintiff has succeeded in proving that the defendants are using trademark "TATA" on the batteries and this act of theirs, amounts to infringement of the trademark of the plaintiff. Thus, plaintiff is entitled to relief of injunction as prayed for.
CS(OS) 1767-2009 Page 8 of 10
12. As regards relief of delivery-up, rendition of accounts and damages are concerned, sufficient evidence has not been put forth to show the degree of harm, which has resulted by the use of impugned mark by the defendants. At the same time, "punitive damages" can be imposed on the defendants for their action of infringement of well known trademark of the plaintiff. In Time Incorporated vs. Lokesh Srivastava, 2005 (30) PTC 3 (Del), it has been held that the award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him; whereas punitive damages are aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities. It has been further held that time has come when the Courts dealing actions for infringement of trademark, copy rights, patents etc. should not only grant compensatory damages but award punitive damages also, with a view to discourage and dishearten law breakers, who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them.
13. In the light of the above discussion, suit of the plaintiff is CS(OS) 1767-2009 Page 9 of 10 decreed in terms of prayer clauses 22(i) and (ii). Punitive damages of `1 lac each is also awarded against the defendants and in favour of the plaintiff. Plaintiff shall also be entitled to costs. Decree- sheet be drawn accordingly.
A.K. PATHAK, J.
MAY 1, 2012 rb CS(OS) 1767-2009 Page 10 of 10