[Cites 12, Cited by 0]
Bombay High Court
Universal Test Solutions Llp vs Punam Kumari Singh on 11 March, 2026
2026:BHC-OS:6334
IA(L)-22386-2024 (f).doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 22386 OF 2024
IN
COMMERCIAL IP SUIT (L) NO. 20290 OF 2024
Universal Test Solutions ...Plaintiff
Versus
Punam Kumari Singh and Others ...Defendants
------------
Mr. Zal Andhyarujina, Senior Advocate a/ w Ms. Akansha Agarwal, Naira
Jejeebhoy and Mr. Arun Panicker, Mr. Jacob Kadntot for the Plaitniff.
Mr. Rashmin Khandekar, Ms. Akshata Modi and Mr. Pankaj Uttaradhi for
Defendant Nos. 1 to 3.
Mr. Arkesh Ayyagari i/b Mr. Meghnath Navlani and Mr. Suraj Singh for
Defendant Nos. 4 and 6.
------------
Coram : Sharmila U. Deshmukh, J.
Reserved on : 30th January, 2026
Pronounced on : 11th March, 2026.
ORDER :
1. This is an action for infringement of trade mark, copyright and
passing-off. By the Interim Application, the Plaintiff seeks to restrain
the Defendants from using the impugned trade marks "Test Magic -
innovative test solutions" (device), "eZscript", "RoboMagic - An
Enterprise Automation Platform" (device), "Universal Technology
Soltuions", "ODC Universal Technology Solutions" and/or "UTS" or any
other deceptively similar trade mark which according to the Plaintiff
infringes the Plaintiff's registered trade mark "Test Magic - innovative
test solutions (device), "eZscript - beyond imagination" (device) and
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"UTS - Universal Test Solutions with device of world".
2. During the hearing of the Interim Application, the written note
tendered on behalf of Defendant Nos. 1 to 3 stated that the Defendant
Nos 1 to 3 are currently using "ODC Universal Technological Solutions
Private Limited" as their corproate name and their domain name
www.uts-global.com/"uts-global". Upon query by this Court, Mr.
Khandekar on instructions makes a statement which will continue till
the hearing and final disposal of the suit that the Defendant Nos 1 to 3
have never used nor they intend to use the mark "eZscript-beyond
imagination" or any other marks similar to it and that since July, 2024,
the Defendant Nos. 1 to 3 have not been using the marks "Test Magic -
Innovative Test Solutions" (device), "Robo Magic - an enterprise
automation platform" and "eZAutomate" and do not intend to use the
same.
3. The Plaintiff's case is that the Defendant No. 1 was carrying out
proprietary business in the name and style of Universal Test Solution to
develop automation platform which requires huge investment. The
Plaintiff No. 2 and Defendant No. 1 executed Memorandum of
Understanding dated 1st September, 2012 briefly outlining the
modalities and terms and conditions. The broadly agreed terms were
(a) formation of limited liability partnership under the common name
Universal Test Solutions (b) the limited liability partnership formed
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would take over the business of software development being carried
out by Defendant No 1 in name of Universal Test Solution (c) patent
right and other trademark of the software developed by Defendant No
1 would be introduced in the LLP and (d) any product of future
development and ownership of any resultant intellectual property shall
be property of LLP.
4. In accordance with the MOU, in or around 6 th October, 2012, the
Plaintiff No. 2 and Defendant No. 1 entered into limited liability
partnership agreement dated 6th October, 2012 whereby the Plaintiff
No. 1 was incorporated and registered under the name and style of
M/s. Universal Test Solutions LLP. Subsequently, disputes arose
between the parties and the Defendant No 1 was expelled from
Plaintiff No. 1. Arbitration proceedings were invoked by the parties
which culminated in the Award dated 31 st July, 2019 which upheld the
expulsion of the Defendant No. 1 from Plaintiff No. 1-LLP. Insofar as
the dispute regarding IPR is concerned, the learned Arbitrator held
that this dispute was beyond the jurisdiction of the Arbitrator.
5. It is stated that Plaintiff No. 2 is the registered proprietor of
trade mark "UTS-Universal Test Solutions with the device of world"
(label), and "UTS Global Software House" (label). Since incorporation
of Plaintiff No. 1 in or around 4th October, 2012, the Plaintiff No. 1 has
been using the trade mark cum trade name "Universal Test Solutions"
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and "UTS". Since its inception, the Plaintiff No. 1 registered and was
using the domain name www.uts-global.com containing the trade name
"UTS" as its leading, essential and memorable feature. The Defendant
No. 2 also opened an account and was maintaining and utilizing not
only the domain name www.uts-global.com, but also services of Drive
HQ registered in name of Defendant No. 2 instead of Plaintiff No. 1 in
collusion with Defendant No. 1. The cost to maintain the said domain
name, annual renewal fees were borne by the Plaintiff No. 1.
6. The web-based software marketed under the Plaintiff's
registered trade mark was developed entirely by Plaintiff No. 1 out of
the funds infused by Plaintiff No. 2 which is evidenced from the
employment contracts entered between the employees and Plaintiff
No. 1. The contracts between the Plaintiff No. 1 and its customers was
signed by Defendant No. 1, at the relevant time as the partner of
Plaintiff No. 1, which clearly acknowledged that the software is owned
by Plaintiff No. 1. The software of the Plaintiff No. 1 and its source
code/computer programme are original artworks within the meaning
of Copyright Act, 1957 and the Plaintiff No. 1 is the owner of the
copyright in various computer programmes.
7. The Plaintiff has produced the statement of annual figures of the
amounts expended in promoting, selling software products and
services of the Plaintiff No. 1 under the registered trade mark and
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trade name Universal Test Solutions and UTS for the period 2014-2016
duly certified by Chartered Accountant.
8. It is stated that the Defendant No. 1, 2, 4 and 6 and certain
unknown persons registered a company under the trade name ODC
Universal Technology Solutions Private Limited and ODC Universal
Technology Solutions LLP incorporating the trademark/trade name-
Universal Technology Solutions which is similar and identical to the
trade name Universal Test Solutions and are using the domain name
www.uts-global.com". The Defendant Nos 1 and 2 and certain unknown
persons are using and marketing the Plaintiff No 1's software indulging
in piracy of software.
9. The Defendants have uploaded the domain video of software on
Youtube which clearly establishes that the software being used and
marketed by Defendant and downloaded/installed in the server of
clients is the same as developed by Plaintiff No 1 and is being marketed
under the impugned trade marks clearly infringing the Plaintiff's
registered trade mark.
10. The Affidavit-in-reply on behalf of Defendant Nos. 4 and 6 state
that Defendant No. 4 is the director of Defendant No. 3 whereas
Defendant No. 6 is the ex-director of Defendant No. 3-company and
was a designated partner of Defendant No. 5-LLP which is now
dissolved and struck-off. It is stated that the Defendant No. 6 has been
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impleaded as one of the incorporators of Defendant No. 3 whereas the
Defendant No. 6 has since resigned from the post of Director in 2021.
It is stated that Defendant No. 5-LLP has been dissolved and struck off
from the records. It is stated that there is no averment that Defendant
Nos. 4 and 6 have ever entered into any transaction/contract in their
personal capacity which has led into infringement of Plaintiff's right in
their trade mark and therefore, no injunction can be granted against
Defendant Nos. 4 and 6.
11. The Defendant Nos. 1 to 3 by their Affidavit-in-reply contends
that the Defendant No 1 is the rightful owner of the trade mark
registered under No 2065575. The invoices produced on record are
raised internally amongst the concerns owned by Plaintiff No. 2 to
create false impression of alleged activity of user. The domain name
www.uts-global.com is owned by Defendant No 2. It is pleaded that
the Plaintiff's mark "UTS- Universal Test Solutions with the device of
world' vs "UTS", "Universal Technology Solutions" and "ODC Universal
Technology Solutions" are significantly different and the phrase
Universal Technology Solutions is different from the term used by the
Plaintiff. The Defendant's use of the terms "UTS" and "Universal
Technology Solutions" is honest and descriptive reflecting the nature
of their business. The term "UTS" is acronym commonly used across the
industries and lacks inherent distinctiveness. The Defendants have
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been using their mark for substantial period from 2016. There is no
evidence produced on record to substantiate the Plaintiff's claim of
extensive goodwill and reputation in the usage of their mark. The
objection to jursidction was raised as no business is conducted within
the jurisdiction of this Court.
12. It is further pleaded that the Plaintiff's reliance on the so called
code does not establish any similarity in the source code allegedly used
by the present Defendants. The Defendant No. 2 has continuously
maintained and paid for the domain name "uts-global.com" since 2009
and no part of the alleged source code have ever been uploaded,
distributed or displayed through this domain.
13. Insofar as the passing-off is concerned, the Plaintiffs have not
demonstrated any reputation and goodwill associated with the alleged
mark, there is no misrepresentation by the Defendant Nos. 1 to 3 and
there is no evidence of any actual or likely damage to Plaintiff's
reputation and goodwill.
14. In the Affidavit-in-rejoinder, insofar as the claim of ownership by
Defendant No. 2 to the domain name "uts-global.com" is concerned, it
is pleaded that the payments made by Defendant No. 2 were
reimbursed by Plaintiff No. 1, which is evident from the arbitration
award. The software being used by the Defendant is the same
software being used by Plaintiff No. 1. The trade mark bearing No
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2065575 has lapsed as it was not renewed. The Defendant Nos 1 to 3
are using the marks UTS or Universal Technology Solutions as trade
marks and not to describe their business. It is denied that domain name
www.uts-global.com was used by Defendant Nos. 1 to 3 as the
company itself was incorporated in 2016 and Defendant No. 2 was
never part of the Plaintiff No. 1 in any official capacity.
15. Mr. Andhyarujina, learned Senior Advocate appearing for
Plaintiff has taken this Court through the terms of the MOU dated 1 st
September, 2012 to contend that immediately on execution of MoU,
the Plaintiff No. 1 acquired ownership of all rights in the software
developed by Defendant No. 1 including the trade mark. He submits
that the Plaintiff No. 1 is the registered owner of the trade mark "UTS-
Universal Test Solutions with device of world" (label) and the Plaintiff's
trade mark "Test Magic" is also linked to www.uts-global.com with
"UTS" being leading and essential feature. He submits that the
acronym UTS is used by the Plaintiff since the year 2012 and is essential
feature of its trade mark. He submits that the TestMagic software and
its source code belongs to Plaintiff No. 1 and is marketed under the
Plaintiff No. 1's registered trade mark and points out the extracts of
the source code appended to plaint at page 384-385 and screenshots
of the demo video appended at page 386-387. He submits that the
conduct of the parties show that all parties proceeded on the basis
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that the software and trade marks are owned by LLP evident from the
employment contracts, business alliance agreement and the invoices.
He would further submit that the learned Arbitrator has observed in
the Award that the software test magic was shown as the asset of LLP.
16. He would submit that the Defendants without any authorization
are operating the business of software by using the Plaintiff No. 1-LLP
name. He submits that the trade name ODC Universal Technological
Solutions Private Limited and ODC Universal Technological Solutions
LLP uses the trade mark/trade name "Universal Technological
Solutions" which is deceptively similar to the Plaintiff's trade mark
"Universal Test Solutions". He submits that the Defendants are also
carrying on business by using the acronym "UTS" and identical domain
name. He submits that Defendant No. 2 had opened an account and
was maintaining and utilizing not only the domain name www.uts-
global.com but also services of Drive HQ registered in his personal
name which account was part of asset of Defendant No 1 and was to
be transferred to Plaintiff No 1. He submits that the cost relating to
domain name was borne by the Plaintiff No. 1 and the Plaintiff No. 1
has done substantial business through the said domain name.
17. He submits that the defense of acquiescence is not available in
the absence of any positive act of Plaintiffs encouraging the
Defendant's business. He submits that the Defendants are estopped
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from contending that the trade mark is descriptive or common or
generic when the Defendants themselves had applied for registration
of the mark. He would further submit that continuous infringement
gives rise to recurring cause of action. In the written submissions,
reference is made to the decisions in the case of:
Bal Pharma Ltd. vs. Centaur Laboratories Pvt. Ltd.1
Renaissance Hotel Holdings Inc. vs. B. Vijaya Sai2
Raj Kumar Prasad vs. Abbott Healthcare Pvt. Ltd.3
Corza International and Others. vs. Future Bath
Products Pvt. Ltd.4
Abdul Rasul Nurallah Virjee and Jalalluddin
Nurallah Virjee vs. Regal Footwear5
Vintage Distillers Limited vs. Ramesh Chand
Parekh6
Peps Industries Private Limited vs. Kurlon Ltd.7
Sunil Mittal vs. Darzi on Call8
Pidlite Industries Ltd. vs. Jubilant Agri and
Consumer Products9
M/s. Bengal Waterproof Limited vs. M/s. Bombay
Waterproof Manufacutring Company10
1 2002 (24) PTC 226 (BOM)
2 (2022) 5 SCC 1.
3 FAO(OS) 281/2014 DHC.
4 FAO(OS) (Comm) 2/2023.
5 2023 SCC OnLine Bom 10.
6 2022:DHC:004894.
7 FAO (OS) (Comm) 94/2020.
8 2017 (70) PTC 346 (Delhi)
9 2014 (57) PTC 617 (Bom)
10 AIR 1997 SC 1398
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and the decision of Mrs. Rajnish Aggarwal and Others vs. M/.s.
Anantam11 was physically handed over.
18. Mr. Khandekar, learned counsel appearing for Defendant Nos 1
to 3 submits that it is not the case of Plaintiffs that the domain name
stood transferred to them by operation of MoU and even reading of
the MoU does not make out any such case. He submits that the Exhibit-
M of the plaint contains multiple entries which clearly demonstrate
that the domain name stood registered in Defendant No. 2 and
renewals were effected by him. He submits that the domain name has
been registered in the name of Defendant No. 2 and has been
maintained out of his own funds and was never the subject-matter of
any transaction between the parties. He submits that a new case is
tried to be introduced in rejoinder that the payment made by
Defendant No. 2 was allegedly reimbursed by the Plaintiff.
19. He would further submit that the Plaintiffs have failed to plead
or prima facie establish any copyright infringement in software or
source code as no details about the Plaintiff's software is given nor any
comparison with Defendant's software to show infringement and as to
which portion of Defendant's source code is said to have been copied.
20. He would further submit that insofar as the corporate name of
Defendant No 3 is concerned, i.e. ODC Universal Technological
11 2009 SCC OnLine Del 3827
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Solutions Private Limited, the Defendant No. 3's corporate name is
structurally, visually and conceptually distinct from the mark Universal
Test Solutions and the ingredients of Section 29(5) of Trade Marks Act,
1999 are not satisfied.
21. He would further submit that the mark for which the Plaintiff's
claim proprietorship i.e. Universal Test Solutions was being used by
Defendant No. 1 prior to entering into MoU and trade name Universal
Test Solutions was not transferred by virtue of MoU. He submits that in
any event, the MoU was executed in limited context and did not
operate as assignment or transfer of intellectual property. He would
further submit that the MoU was preliminary and transitional
document which did not effectuate any transfer of IPR and was
enforceable contract. He submits that the MoU cannot be construed
as document of vesting of intellectual property as formal instrument of
assignment was required to be effected.
22. He would submit that no case for infringement or passing-off is
made out as the Plaintiffs have failed to establish enforceable goodwill
for passing-off on the date when the Defendants commenced the
impugned use. He further submits that the Plaintiffs are guilty of
unexplained delay which would deny them any interim relief. He would
further submit that this Court has no jurisdiction to entertain the
matter as the Plaintiff's assert that the part of cause of action has
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arisen out of territorial jurisdiction and there is no leave sought under
Clause XII or Clause XIV of Letters Patent (Bombay). In support, he
relies upon the following decisions :
Satyam Infoway Ltd. vs. Siffynet Solutions (P)
Ltd.12
Eicore Technologies Pvt. Ltd. vs. Eexpedise
Technologies Pvt. Ltd.13
Sarine Technologies Ltd. vs. Diyora and Bhandari
Corporation14
Chemco Plastic Industries Pvt. Ltd. vs. Chemco
Plast15
Mangalam Organics Ltd. vs. N Raga Rao and Sons
Pvt. Ltd.16
Exegis Infotech (India) Pvt. Ltd. vs. Mediamanage
Insurance Broking Pvt. Ltd.17
Uniply Industries Ltd. vs. Unicorn Plywood Pvt.
Ltd.18
H. L. and D. Ltd. vs. C. B. Co. Op. H. S. Ltd.19
Maganlal Savani vs. Multi Screen Media Pvt. Ltd. 20
Lord Inn Hotels and Developers Pvt. Ltd. vs. Vikas
Seth, trading as Lords Residency, Manali21
23. Learned counsel for Defendant Nos. 4 and 6 seeks deletion and
12 (2004) 6 SCC 145.
13 CS (Comm) No. 1146/2018, decided on 4th September, 2023.
14 2017 SCC OnLine Guj 2200.
15 2025 SCC OnLine Bom. 4896.
16 2025 SCC OnLine Bom 3017.
17 2015 SCC OnLine Bom 3797.
18 MANU/SC/0315/2001.
19 2014(3) Mh. L. J. 376.
20 2016 SCC OnLine Bom 10472.
21 IA NO. 190 of 2025 in COMIP No. 247 of 2024, decided on 5th March, 2025.
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submits that no reliefs are sought against them and they are
impleaded in their personal capacity. He submits that in the year 2021,
the Defendant No 5 LLP was struck off from the records and the
Defendant No 4 has resigned from Defendant No 3 company. On
instructions, he makes a statement that none of the infringing
activities are being carried out by Defendant No 4 and 6 and none of
the marks are used or will be used by the Defendant nos 4 and 6.
24. Rival contentions now fall for determination.
25. The statement made by Mr. Khandekar, on instructions, are
accepted as undertaking given to this Court. The statement about
discontinuation by the Defendant Nos 1 to 3 of the trade marks "Test
Magic-Innovative Test Solutions" device, "Robo Magi- An Enterprise
Automoation Platform" (device), "ezAutomate" considerably narrows
down the marks of which infringement is claimed and restricts the
scope of inquiry as to infringement of domain name "www.uts-
global.com/ utsglobal", infringement of the Plaintiff's trade mark by
use of the corporate name of Defendant No 3 i.e. "ODC Universal
Technological Solutions Private Limited", UTS and copyright
infringement by use of the Plaintiff's software and source code. In view
of the narrow confine of the inquiry to trade mark vs trade name, it is
not necessary to deal with the decisions cited in context of trade mark
vs. trade mark infringement.
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26. The contest is between the Plaintiff's mark UTS- Universal Test
Solutions with the device of World, its domain name www.uts-
global.com vs the Defendant No 3's corporate name- ODC Universal
Technological Solutions Private Limited and domain name www.uts-
global.com.
27. There is a specific pleading that the Defendant No. 5-ODC
Universal Technology Solutions LLP is struck off from the records of
the register of firms. There is thus no issue of infringement of the
Plaintiff's trade mark by the tradename of Defendant No 5.
28. Dealing first with the issue of infringement of domain name
www.uts-global.com, the case of infringement is premised on the
ground that the impugned domain name uses the word "uts" which
forms the essential feature of the Plaintiff's registered mark UTS-
Universal Test Solutions with the device of world and since its inception
in the year 2012, the Plaintiff No 1 is using the domain name www.uts-
global.com. In this context if the plaint is perused, paragraph No. 15 of
the Plaint specifically pleads that the Defendant No. 2 had also
opened an account and was maintaining and utilizing the domain name
which was registered in his personal name in collusion with Defendant
No. 1 and the cost to retain the domian name, annual renewal fees and
maintenance cost was borne by the Plaintiff No 1.
29. It is therefore the Plaintiff's own case that the domain name
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was registered in the name of Defendant No. 2, though, alleged to
have been so registered with the collusion of Defendant No 1. In the
Affidavit-in-rejoinder, it is pleaded that the Defendants cannot claim
rights in the domain name merely because it was purchased by
Defendant No. 2 in his name.The pleadings constitutes an admission of
the domain name being registered in personal name of the Defendant
No 2. It is not the Plaintiff's case that by virtue of MoU or LLP
Agreement, the domain name stood transferred to the Plaintiff No 1.
Apart from the same, there is no material to demonstrate that the
domain name constituted an asset of Defendant No. 1 and therefore,
there is no question of considering whether under the MoU, the
domain name was transferred to Plaintiffs.
30. It is the specific case of the Defendant Nos 1 to 3 in paragraph 24
of the reply affidavit that the Defendant No. 2 has continuously
maintained and paid for the domain name "uts-global.com" since the
year 2009. The document annexed at Page 320 of the plaint shows
registration of the domain name uts-global name on 22 nd February,
2010 in the nameof Defendant No 2. The billing invoice at Page 323 of
the domain name is in the name of the Defendant No 2. The credit card
statements show payment in respect of the domain name are stated in
the name of the Defendant No 2. In response to paragraph 24 of the
reply affidavit, in rejoinder, it is not denied that the payments were
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made by Defendant No. 2 and the Plaintiffs sought to improvise its
case by pleading that the Defendant No. 2 was duly reimbursed for the
same. The case of reimbursement is bare pleading unsubstantiated by
any document on record.
31. The MoU/LLP arrangements were admittedly between the
Plaintiff and Defendant No 1 and in so far as the Defendant No 2, who
is the husband of Defendant No. 1, is concerned, the case is that in or
about the year 2014, the Plaintiff No 1 had formed Universal Test
Solutions LLC in the UAE for carrying out marketing of Plaintiff No 1's
software in which Defendant No 2 was inducted as partner. There is no
case pleaded of transfer of the domain name by the Defendant No 2 to
Universal Test Solutions LLC and the said entity is not a party to these
proceedings. Prima facie the material placed on record shows creation
and registration of the domain name using the word "uts" in the name
of the Defendant No 2 on 22nd February, 2010 prior to the use of the
Plaintiff No 1 which was constituted on 4th October, 2012.
32. The Plaintiff's trade mark is "UTS-Universal Test Solutions with
device of world" which is label mark comprising of the word "UTS"
depicted in an elongated circle with the words "Universal Test
Solutions" written below the elongated circle followed by the words
ROI Simplified against the background of the world. The Plaintiff's
claim that the word "UTS" is the label mark's leading and essential
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feature. The registration certificate appended to the Plaint shows that
the mark has been registered in the name of the Plaintiff No. 2 on 12 th
April, 2017 which registration relates back to the date of the
application on 26th July, 2016 in class 9 and the second registration on
14th April, 2017 relating back to the date of application on 26 th July,
2016 in class 42. The registration of the Plaintiff's trade mark is
therefore, subsequent to the registration and use of the Defendant
No. 2 of the domain name comprising of the word "uts". Even
accepting that the word "UTS" is an acronym of the Plaintiff No. 1's
trade name "Universal Test Solutions", it needs to be noted that the
Defendant No 1 was already trading in the name of Universal Test
Solutions. There is bona fide explanation for adoption of the domain
name bearing the words "uts" as the Defendant No 2 is the husband of
Defendant No 1. As the material on record prima facie demonstrates
prior use and registration of the domain name by the Defendant No 2
and sans any material to show that the domain name was transferred
to the Plaintiffs or the expenses incurred by the Defendant No 2 in
respect of the domain name were reimbursed to the Defendant No 2,
no proprietary right can be claimed by the Plaintiffs in the domain
name and the prior user constitutes valid defense under Section 34 of
Trade Marks Act, 1999.
33. In so far as the use of deceptively similar mark by the Defendants
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on their website which is demonstrated at Pages 467, 468 and 469 of
the plaint is concerned, perusal of the extracts show the use of device
of world deceptively similar to the device of world of the Plaintiff's
registered mark. It is pleaded in the plaint that the Defendants have
altered their website by amending the UTS logo with device of world
which is demonstrated from page 533 of the plaint, which diffuses the
claim of infringement by use of device of world.
34. Dealing next with the issue of infringement of the Plaintiff's
registered trade mark "UTS-Universal Test Solutions" with device of
world (label mark) by use of the corporate name by Defendant No. 3-
ODC- Universal Technological Solutions Private Limited, the case put up
is of trade mark vs trade name. The infringement is governed under
the provisions of sub-sections (5) of Section 29 of Trade Marks Act,
1999 which reads as under :
"(5) A registered trade mark is infringed by a person if he
uses such registered trade mark, as his trade name or
part of his trade name, or name of his business concern
or part of the name, of his business concern dealing in
goods or services in respect of which the trade mark is
registered."
35. Sub-section (5) of Section 29 provides that trade mark is
infringed by use of the registered trade mark by a person as his trade
name or part of his trade name. The legislature has used different
expressions in sub-sections (1) to (4) and in (5) of Section 29. The
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ingredients of other sub sections of Section 29 cannot be imported in
sub section (5) of Section 29, which operates in a narrow field. There is
no question of application of deceptive similarity test and what is
required to be demonstrated that the registered trade mark is used as
trade name or part of the trade name. In the case of Chemco Plastic
Industries Pvt. Ltd. vs. Chemco Plast (supra), this Court had the
occasion to consider the distinction between sub-sections (4) and (5) of
Section 29 of Trade Marks Act, 1999. The Co-ordinate Bench held that
sub-section (5) governs the phrase trade mark vs. trade or business
name and proscribes infringement of trade mark by making use of the
same in the trade or business name, while dealing in goods or services
in respect of which the trade mark is registered. It noted the decision
of the Hon'ble Full Bench of this Court in the case of Cipla Limited vs.
Cipla Industries Pvt. Ltd., Delhi22 where the Hon'ble Full Bench held
that Section 29(5) applies to the trade mark/business name/situation.
36. The Defendant No 3's corporate name is "ODC Universal
Technological Solutions Private Limited", whereas the Plaintiffs trade
mark is "UTS-Universal Test Solutions". The plaint pleads that the word
"uts" is prominently displayed and that the word "uts" and "Universal
Test Solution" are the essential and leading feature of the Plaintiff No
1's trade mark. Section 29(5) requires the exact use of the registered
22 2017 SCC OnLine Bom 6791.
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trade mark as trade name or part of trade name. The dominant feature
test if applied to infringement action under Section 29(5), would
constitute application of test of deceptive similarity thus importing
the ingredients of sub section (1) to (4) into sub section (5) of Section
29. The Defendant No 3's corporate name does not use the Plaintiff's
trade mark as part of its trade name. The contention that by use of the
words "uts" as part of domain name and email address, Section 29(5)
gets attracted is unacceptable in view of the discussion above that the
domain name is registered in name of Defendant No 2 prior to the use
by the Plaintiff No 1. The ingredients of Section 29(5) are prima facie
not satisfied in the present case.
37. Coming to the issue of copyright infringement in the software or
source code, the Plaintiff has pleaded that that the software
developed by Defendant No 1 was very rudimentary and nascent while
the final software version developed by the Plaintiff No 1 and its
employees was complete, highly efficient and thoroughly intuitive. It is
stated that the web- based software marketed under the Plaintiff's
registered trade mark as well as the source code are developed
entirely by Plaintiff No. 1 in which the copyright subsists in favor of the
Plaintiff.
38. Section 2(o) of Copyright Act, 1957 defines literary work to
include computer programes, tables and compilations including
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computer databases. Section 13 (1) (a) provides that copyright shall
subsist in the original literary work and under Section 14(b) in case of
computer programme, copyright means an exclusive right to reproduce
the work in any material form, issuing copies and to sell or give on
commercial rental or offer for sale or for commercial rental any copy of
computer programme. The case of infringement as pleaded is that the
copyrighted software and source code is being used by the Defendants
illegally without any license or authorization from the Plaintiffs. The
case thus is of unauthorised access and commercial exploitation of the
copyrighted software and source code by the Defendants through its
domain. The pleadings on the aspect of piracy are lacking in material
particulars and constitute bare assertions. The pleadings concentrate
on the manner of development of the software and source code by the
Plaintiffs out of their funds and through their employees to assert its
ownership in copyright. Even accepting the Plaintiff's copyright in the
software and source code, it is necessary for the pleading of piracy to
be substantiated by placing material on record for this Court to come
to a prima facie finding of piracy of software. In cases where the claim
is of copyright infringement of computer programme, it is necessary
for the Plaintiff to seek appointment of an independent expert for the
purpose of submitting a report on comparison of the Plaintiff's
copyrighted software and source code with Defendant's software and
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source code to demonstrate prima facie case of piracy. It cannot be
disputed that the infringement of computer programme involving a
software and source code involve highly technical questions and
without the assistance of expert report merely on the basis of screen
shots of the demo videos uploaded by the Defendants, it is not
possible for this Court to come to a prima facie finding of the piracy of
software and source code. It also does not help that there is no
identified description of the software, which has been developed by
the Plaintiffs and juxtapositioning the same with the Defendant's
software for the purpose of prima facie comparison even by this Court.
There were no submissions canvassed sufficient to arrive at finding of
copyright infringement.
39. In light of the above prima facie finding that there is no
infringement under Section 29(5) of Trade Marks Act, 1999 by use of
the Defendant's trade name "ODC Universal Technological Solutions
Private Limited", it is not necessary to deal with the nature and
character of the MoU, as to whether there was transfer of Universal
Test Solutions to the Plaintiff No 1 under the MoU or of intellectual
property rights. Coming to the issue of passing off, the Defendant's
case is of non user of the mark since the year 2016, which is responded
by stating that non user cannot be used as defence for infringement.
The aspect of non user of the mark prima facie constitutes absence of
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goodwill and reputation relevant to the action of passing-off. The
classical trinity test requires the Plaintiffs to prove (a) goodwill and
reputation (b) misrepresentation and (c) damage to the goodwill and
reputation. The Plaintiff is required to show existence of goodwill and
reputation on the date when Defendant commenced the impugned
use, which would not be available in case of non user of the mark. To
demonstrate goodwill and reputation, the Plaintiffs have placed on
record invoices at Pages 398 to 418 of the plaint. The invoices at Pages
398 to 406, 416 to 418 are of the year 2022 and issued to Richway OPC
Private Limited and India Auto Works LLP. The invoices from pages 407
to 415 pertains to the year 2013 to 2015, which are in all six invoices
and there is one purchase order at Page 419. The certificate of
chartered accountant at pages 465 certifies the expenses towards
marketing, promotion and development of software and does not
certify that the expenses were incurred towards the development of
software marketed under the registered trade mark. It is erroneously
pleaded in the plaint that the document at Exhibit "T" is the annual
income of the Plaintiff No 1 in respect of its business under the
registered trade mark, whereas perusal of Exhibit "T" which is at Page
466 shows that the said certificate is not the annual statement of
sales/income of Plaintiff No 1 but the same document which is
annexed at Page 465 certifying the promotional and marketing
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expenses. Prima facie there is no sales turnover placed on record, the
invoices are sporadic and does not demonstrate enormity of use of the
trade mark to assess the goodwill and reputation. It is pleaded by the
Defendant Nos 1 to 3 that the invoices have been raised internally
among the entities/concerns owned or controlled by the Plaintiff No 2
and are created. The rejoinder does not dispute this fact. The material
produced on record is insufficient to make out a case of goodwill and
reputation of the Plaintiff No 1 in respect of the registered trade mark.
As the infringement is claimed by reason of use of the corporate name
by the Defendant No 3, it must be pleaded and demonstrated that the
Defendant No 3 has intentionally or unintentionally projected its
services as that of the Plaintiff No 1. There is no such prima facie case
of misrepresentation made out by the Plaintiffs. As the goodwill and
reputation is not demonstrated there is no question of causing any
damage. The Plaintiffs have thus failed to make out prima facie case of
passing off against the Defendants.
40. In light of the above discussion, the Plaintiffs have failed to make
out a prima facie case for grant of injunction.
41. Resultantly, Interim Application stands dismissed.
[Sharmila U. Deshmukh, J.]
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