Intel Corporation vs Retd. Admiral B.R. Vasant And Anr.
2005 Latest Caselaw 1190 Del

JUDGMENT

O.P. Dwivedi, J.

1. Plaintiff, Intel Corporation, is engaged worldwide in the business relating to computers and parts thereof including semi-conductor devices, memory chips, microprocessors, central processing units being commonly known as the brains of computers, motherboards, software, telecommunications and creating awareness and knowledge of computers under the name and mark inter alia containing the word INTEL, which is a coined word having a very high degree of inherent distinctiveness. The plaintiff has used the word INTEL as its corporate name and as a trademark on its products since 1968. The plaintiff supplies the computer and telecommunications industry with chips, board, systems, software, networking and communication equipment and services that comprise the "ingredients" of computer architecture and the internet. The plaintiff has continuously endeavored to provide technologically advanced and innovative products. In the year 2000 alone, the plaintiff has spent in excess of US $ 3.8 billion on research and development programs. The plaintiffs trade mark is well known and widely recognized among computer manufacturers following its first launch of microprocessors in 1971. The launch of the "intel inside" program heightened awareness of the mark INTEL among the general public, making it one of the most recognized brands in the world, and virtually became a household name. Plaintiff coined the term INTEL INSIDE and launched its revolutionary INTEL INSIDE program, a logo licensing and co-operative advertising program. Under this program, international computer manufacturers such as IBM, Dell, Hewlett-Packard, Compaq and Wipro, Zenith, HCL, Vintron, Acer and PCS in India that sell personal computers containing intel manufactured microprocessors are licensed to use Intel's INTEL INSIDE logo on their computers and in their advertising and promotional materials. Through this program, the INTEL INSIDE logo, appears on the front bezel of millions of computers around the world and the INTEL INSIDE logo are seen extensively in computer manufacturer advertisements. The INTEL INSIDE program is now one of the world's largest co-operative, ingredient brand marketing programs and was regarded as "one of the more magnificent campaigns of the century" according to an article in Advertising Age Magazine (November 15, 1999). This cooperative marketing program heightened awareness of the INTEL INSIDE logo, as well as the INTEL mark, to the general public making it one of the most recognized brands in the world. The plaintiff has over 2000 trademark registrations worldwide consisting of or incorporating the word INTEL, inter alia in respect of computers, computing devices, microprocessors and various parts thereof as well as in respect of software to be used with computers and other computer related activities. A list of the countries in which the plaintiffs said trademarks containing the word INTEL is registered and/or pending for registration has been filed. The plaintiff has also obtained registration of the 'Intel Inside' mark and Design under No. 556646 in Class 9 for microprocessors, parts and fittings therefore, in India. The registration has been renewed and subsisting and is, therefore, in full legal force conferring on the plaintiff the right to its exclusive use and to restrain use of any identical or deceptively similar mark by unauthorized persons. The annual revenue of the plaintiff for the period 1989-2000 and the promotional and advertising expenditure incurred by the plaintiff for the same period are as follows:

  YEAR    Advertising & Promotional     Revenue 
         Expenses ($ US Million)   ($ US Million)
1989           305.1                   3127
1990           403.6                   3921
1991             512                   4779
1992             675                   5844
1993             827                   8782
1994            1034                  11521
1995            1296                  16202
1996            1736                  20847
1997            2148                  25070
1998            2253                  26273
1999            2895                  29400
2000            3000                  33700

 

2. Although the plaintiff formally established its operations in India in 1988 with the opening of its branch office in Bangalore, it has been exporting products in India as far back as 1972. The plaintiffs INTEL branded products are marketed and promoted by its branch office and wholly owned subsidiary in India called Intel Asia Electronics Inc. and Intel Technology India Private Limited respectively. The plaintiffs Indian companies have set up branch offices in Delhi, Mumbai, Kolkata, Bangalore, Chennai and a network of dealers and distributors throughout India. The plaintiffs subsidiary company and branch office have spent millions of rupees to popularize its INTEL branded products in India. Copies of print advertisements and news articles from newspapers and magazines have been filed.

3. It is pleaded with the advent of the Information Technology (IT) revolution in India and widespread use of computers in every field, the mark INTEL has become a household name in India, more so on account of a large volume of computer software being developed and exported by Indian companies. In addition a large number of Indians working in USA and Europe in the IT sector have contributed to the popularity of INTEL as a brand name. The plaintiff itself employs more than 1,500 Indian nationals in its various companies in USA and Europe and many ore second generation Indians. By virtue of long standing use, publicity and a wide range of activities, as detailed above, carried on by the plaintiff under the mark/name INTEL, the said trademark/name has come to be exclusively associated with its goods and business. Under the circumstances, there cannot be a possible explanation for any trader to adopt the name/mark INTEL in relation its goods or as its trading style/corporate name. In or around December, 2001, the plaintiffs attention was drawn to defendant's listing in the telephone directory under the name INTELSOFT PVT LTD. On making inquiries, the plaintiff learned that the defendants are carrying on the business of software development, date processing and hardware consultancy. Defendant No. 1-Retd. Admiral B.R. Vasant is the Director of defendant No. 2. Retd. Admiral B.R. Vasant is carrying out a number of IT related business activities under the name Intelsoft Pvt. Ltd (defendant No. 2). However the exact constitution of the defendants will be known only after discovery in the present action. The defendants are carrying on business of software development, date processing and hardware consultancy and trading in all types of information technology and training of computers. Pursuant to inquiries the plaintiff addressed a warning letter on 21st December, 2001 to defendants notifying them of their rights in the name/mark INTEL and calling upon them to settle the issues amicably. The defendants did not respond to the warning letter and kept on delaying the issue on some or the other pretext on following up with them. In absence of any response from the defendants, the plaintiff issued reminders on 18th January, 2003 and 15th March, 2002 calling upon the defendants to respond within 10 days. Subsequently, a reply dated 22nd April, 2002 was received from the defendants denying allegations and refusing to settle the matter. The plaintiff issued a rejoinder on 6th June, 2002 in response to party's reply, reiterating its contentions and asking the defendants to change their trading style to delete or amend the name INTEL of which plaintiff is the registered proprietor. In order to provide reasonable assistance, the plaintiff also offered the defendants to assist with the name change process and allow a reasonable transition period to effect the change. However, there was no response received from the defendants further to plaintiffs rejoinder. A meeting was held between the parties in July/August, 2002 but ultimately no settlement was arrived at and hence this suit. Plaintiffs contention is that INTELSOFT is clearly, dishonest as it gives the impression that the goods/services offered by defendants are affiliated or approved with the plaintiff which amounts to passing off and infringement. Through this suit, plaintiff seeks order of permanent injunction restraining the defendants from advertising, offering for sale, dealing in IT related goods and or serves including software development, providing software/hardware consultancy, data processing and/or any other goods and/or services using the name 'INTELSOFT' as their style/trade name and/or any other mark deceptively similar to the plaintiffs trade mark INTEL. A decree for damages to the tune of Rs. 5 lakhs and for rendition of accounts have also prayed for but this prayer was given up by learned Counsel for the plaintiff at the time of arguments. Defendants did not put in appearance despite service. They were proceeded ex parte vide order dated 1st October, 2003.

4. In proof of its case, plaintiff has filed affidavit of Mr. Rahul Sethi who is the constituted Attorney of the plaintiff-Intel Corporation and is duly authorized and competent to sign and verify legal pleadings and to institute the present suit. In the said affidavit, Mr. Sethi has substantiated the averments contained in the plaint on Oath and also proved various documents namely copy of warning letter dated 21st December, 2001 as P-l, postal acknowledgment as P-2, reminder letter dated 18th January, 2002 as P-3, postal acknowledgment as P-4. Notice dated 15th March, 2002 as P-5 and postal acknowledgment as P-6, defendant's reply dated 22nd April, 2002 as P-7, another letter dated 22nd October, 2002 as P-8, postal acknowledgment as P-9 and printout of Tata Yellow Pages as P-10.

5. In absence of any version or evidence to the contrary, there appears no reason to disbelieve the plaintiffs version which has been substantiated by affidavit sworn by Sh. Rahul Sethi, constituted attorney of plaintiff and documents referred to above. Therefore, the suit deserves to be decreed exparte.

6. Accordingly, suit in terms of prayer Clause 34 (i) of the plaint is decreed ex parte with costs. Let the decree be drawn accordingly.

7. Suit & all pending applications stand disposed of.