Intel Corporation vs Naresh Narula
2005 Latest Caselaw 1454 Del

JUDGMENT

Anil Kumar, J.

Page 1846

1. This judgment will decide the suit of the plaintiff seeking restrain against infringement of his trade mark, passing off and rendition of accounts. The suit was filed by Shri Rahul Sethi as attorney of the plaintiff who has signed and verified the pleadings and instituted the suit on its behalf. The suit concerns intellectual property rights of the plaintiff in the trade mark `INTEL' and violation thereof by the defendant by using an identical mark INTEL on his electronic goods.

2. The plaintiff averred that on its own and through its subsidiaries, he is engaged in business relating to the fields of computers and parts thereof. Since its inception in 1968, the plaintiff has grown to be a truly global corporation. Plaintiff stated that currently it employs an estimated 78,000 people in its various subsidiary companies throughout the world and its global annual turnover for the year 2003 was in excess of US $ 30 billion. The plaintiff has business operations in excess of 40 countries in different continents. The plaintiff has used the mark/name INTEL in its corporate name and on is Page 1847 its products since 1968, the year it was incorporated. The use of name and mark INTEL was first commenced in the United States of America and subseq uently extended to other countries of the world. The plaintiff also uses its INTEL mark on products beyond computers. Advances in digital technology and the use of this technology in the home entertainment environment have resulted in the plaintiff's mcro processors and other INTEL branded products being increasingly used in many consumer electronic products, including set-top boxes, MP3 players, media centers, digital cameras, high definition television sets (HDTV), digital audio and video devices and household appliances such as microwave ovens. The plaintiff has launched a'' digital home'' initiative specifically to develop and distribute products and technologies to support new consumer usage models in the digital home.

3. The plaintiff averred that INTEL brand has been ranked among the top 10 brands by leading independent publications since as early as 1993. In the 1969 plaintiff adopted distinctive style for representing the mark INTEL, popularly known as INTEL 'dropped e logo'. Over the years, the INTEL 'dropped e logo' has been given wide publicity and has come to be exclusively identified with the plaintiff's products. In the ear 1991, plaintiff adopted the INTEL inside and design mark and launched its revolutionary INTEL INSIDE program, a logo licensing and cooperative advertising program. Through this program, the INTEL inside and design logo appears on the front bezel of millions of computers around the world and the INTEL inside and design logo mark is seen extensively in computer manufacture advertisements.

4. The plaintiff contended that it has an estimated 2000 trademark registrations worldwide consisting of or incorporating the word INTEL. Plaintiff gave the details of registrations filed in India in paragraph 14 of the plaint. It was averred that the trade mark registrations are valid and subsisting and are in full force conferring on the plaintiff right to its exclusive use and to restrain use of any identical or deceptively similar mark by unauthorized persons. Plaintiff started operations in India in 1998 with the opening of its branch office in Bangalore, however, the plaintiff has been exporting products to India as far back as 1972. The plaintiff has been spending considerable amounts on the sales, advertisements and promotional expenses which are given in para 16 of the plaint.

5. The plaintiff pleaded that in the Month of March 2005, it came to know unauthorized business activities of defendant of manufacturing and assembling electronic goods including compact kits for color television, black and white television, VCD players and CD players and selling these products with a small sticker on each of the kits bearing INTEL mark and swirl device around the INTEL mark. The sticker and swirl device also had prevalent and visible details of the approving authority and batch number, alsely enunciating that the goods have been certified and passed by the plaintiff. The defendant is using plaintiff's registered INTEL mark of class 9 and 18 of its electronic goods with similar swirl device around the INTEL mark which has been inspired by the plaintiff's ''INTEL INSIDE and Design'' mark and mis-representing to the trade and public that the defendant's goods are approved by plaintiff. The electronic goods brought out by the defendant also represent false and misleading reference and association with the plaintiff's Page 1848 and the whole effort is to cash in or/and exploit the enviable goodwill and reputation enjoyed by the plaintiff.

6. The summons of the suit were issued on 12th April, 2005 and an interim order was passed restraining the defendant from using the word 'INTEL' as a trade mark or trade name. The defendant was served with the summons, however, since no one appeared, he was proceeded ex parte by order dated 11th May, 2005. Thereafter, the plaintiff has given his evidence on affidavit. The plaintiff filed the deposition of Mr. Rahul Sethi, who deposed that the plaint was signed, verified and instituted by him on behalf of plaintiff. He proved and exhibited the power of attorney in his favor as Ex.PW1/1. The witness of the plaintiff deposed in detail about the plaintiff and its subsidiaries and its growth during past many years. The witness also deposed that `INTEL' mark is used on products beyond computers as the plaintiff's micro processors and other INTEL branded products are increasingly used in many consumer electronic products including set-top boxes, MP3 players, media centers, digital camera, high definition elevision sets, digital audio/video devices. The witness also deposed about adoption of `INTEL INSIDE and Design mark' and launch of revolutionary `INTEL INSIDE' program. In para 15 (1) of the affidavit, the witness deposed about the registration of `INTEL INSIDE design' and `INTEL' mark in India. He deposed that the registration of trade mark is valid and proved the certificate of registration collectively and exhibited them as Ex.PW1/2. The witness of the plaintiff also deposed about the expenditure incurred world wide on its products by the plaintiff and proved the copies of advertisements collectively and exhibited them as Ex.PW1/3. The witness of the plaintiff deposed that the plaintiff established its operation in India in 1988 by opening its Branch office in Bangalore and establishment of `INTEL' Foundation for developing and funding educational and charitable programs in India.

7. The witness categorically deposed about the illegal and unauthorized activities of the defendant who is into the business of manufacturing and assembling electronic goods including compact kits for color televisions, black and white televisions, VCD and CD players. It was deposed that the defendant was using a small sticker on each of its goods bearing the INTEL mark and swirl device around the INTEL mark which also have highly prevalent and visible details of the approving authority and batch number in it and thus falsely enunciating that the goods have been certified and passed by the plaintiff. The plaintiff exhibited the products of the defendant collectively as Ex. PW1/4 and business card of the defendant as Ex.PW1/5.

8. The witness of the plaintiff deposed that the INTEL mark on the kits of the defendant is identical to the plaintiff's registered INTEL mark in class 9 and 18 and the use of similar swirl device around the INTEL mark has also been copied from plaintiff's ''INTEL INSIDE and Design'' Mark. According to the deposition of the plaintiff, the defendant has been mis-representing to the trade and public that his goods are approved by plaintiff. He also deposed that Mr. Naresh Naurla is the proprietor of Intac Systems situated at Pandav Nagar, Patpar Ganj, Delhi who is carrying out illegal and unauthorized activities with the intent of trading and benefiting from the reputation and goodwill associated with the plaintiff and its well know INTEL mark.

Page 1849

9. The witness categorically stated that micro-processors of the plaintiff are used in a wide range of electronic goods. He stated that the mark INTEL is prima facie inherently distinctive of the products and business of the plaintiff and mark has been continuously and extensively used by the plaintiff since 1968. Use of identical and deceptively similar mark by the defendant is diluting and eroding the goodwill and reputation of the plaintiff and causing irreparable harm and injury. According to the witness, the adoption and use of deceptively similar mark INTEL by the defendant amounts to infringement of plaintiff's registration No.678000, 556646, 736517 and 768180. The unauthorized and illegal activities of the defendant are resulting into loss of distinctiveness and exclusivity attached to the plaintiff's mark and trade name and is also tarnishing the reputation enjoyed by the plaintiff's trade mark and impeding right of the plaintiff to legitimate and continued expansion of its business to provide additional goods and services.

10. The pleas and contentions raised by the plaintiff, facts deposed and proved and the documents proved by the plaintiff have remained un-rebutted. The plaintiff has established that it has trade marks in `INTEL'; 'INTEL INSIDE and DESIGN' and 'INTEL MEX'. The plaintiff has proved that the suit has been filed by a duly authorized person on its behalf. It has been proved that the mark INTEL is used beyond computers even in home entertainment environment. The trademark INTEL reminds consumers that it is designed with the INTEL microprocessors. The plaintiff has an estimated 2000 trademark registrations world wide. The plaintiff has invested and continued to invest substantial amount of money in advertising and promoting the INTEL mark and in multitude of computer peripherals and services under the INTEL mark. There is no doubt that in the circumstances INTEL mark serves as the exclusive designation of the origin of plaintiff's products and services and the plaintiff alone is entitled to lawful use of rademark/mark INTEL to the exclusion of others unless they are expressly authorized by the plaintiff. If that be so the defendant cannot use the mark INTEL on any of its products unless he is specifically authorized by the plaintiff. The defendant has got appeared and proved that it has any authority from the plaintiff to use its mark INTEL. The inevitable inference in the circumstances is the defendant has deliberately adopted and used the INTEL mark with the intent of trading and benefiting from the reputation and goodwill associated with the plaintiff and its well know INTEL mark. Illegal use of plaintiff's trademarks INTEL shall cause damage to the plaintiff by dilutions and gradual erosion of his goodwill combined with the loss of distinctiveness and exclusivity of his mark. It will also tarnish the reputation of the plaintiff's trademarks in absence of the stringent quality controls which the plaintiff insists in respect of his products. The defendant does not have any right to dilutes and tarish the image of the plaintiff by using his trademark. And thus other inevitable inference is that in case defendant is not restrained from using the trademark/mark of the plaintiff, it will cause irreparable harm and injury to him. In the circumstance , the plaintiff is entitled for a decree of perpetual injunction restraining the defendant from using the name INTEL and similar swirl device as a trademark, trade name, e-mail address and web site name in any business, manufacture, advertising, selling directly or indirectly. The plaintiff is also entitled to take printed matter including stationery, goods, packaging Page 1850 boxes, and plastic covers etc. from the defendant having offending INTEL mark with similar swirl device so that the defendant may not use them violating the trademark of the plaintiff.

11. Though the plaintiff has claimed a decree of damages for a sum of Rs 20 lakhs, however, no evidence has been led by the plaintiff to establish that he has suffered damages of Rs 20 lakhs or any other amount. Since the plaintiff has not been able to establish the quantum of damages suffered by him, he is not entitled for any decree for recovery of any amount as damages against the defendant.

12. In the circumstances a decree for perpetual injunction is passed against the defendant, his agents or any person acting through the defendant restraining him from using the name INTEL and similar swirl device as that of plaintiff as a trademark, trade name, e-mail address and web site name in any business, manufacture, advertising and in direct or indirect sale. A decree of mandatory injunction is also passed against the defendant directing him to deliver to the plaintiff any printed matter including stationery, goods, packaging boxes, and plastic covers etc. with offending INTEL mark and similar swirl device so that the defendant may not use them violating the trademark of the plaintiff and plaintiff may destroy the same. Cost of the suit is also a arded to the plaintiff against the defendant. Suit in terms hereof is decreed and a decree sheet be drawn.