Delhi High Court
Dell Computer Corpn. vs Arun Kumar And Ors. on 28 October, 2005
Author: O Dwivedi
Bench: O Dwivedi
JUDGMENT
O.P. Dwivedi, J.
1. Plaintiff, an American company, established in Austin, Texas, USA in the year 1984, is dealing in computer hardware. Plaintiff company has diversified and expanded its activities which presently include but are not limited to computer hardware, software and peripherals. Besides, computer-related consulting, installation, maintenance, leasing warranty and technical support services. Earlier the plaintiff was called PC's limited but in the year 1987 plaintiff had adopted and commenced use of trademark DELL. According to the plaintiff, the trade mark has acquired tremendous and enviable goodwill and reputation. General public at large assumes that any computer or information technology related product or service bearing the word DELL is a product or service that originates from or is connected with the plaintiff company. The media has widely and extensively covered the plaintiff company and its success. The plaintiffs product have received recognition from leading computer magazines, which have consistently rated the plaintiffs products as being amongst the best in the world, in their respective categories. The plaintiff has become an icon and focus of the Information Technology industry. This media coverage has enhanced the instant recognition the plaintiff enjoys amongst consumers and the trade throughout the world as and for the goods and services originating from the plaintiff exclusively. In para 6 and 8 of the plaint, plaintiff has given its annual sales figures under the trade mark DELL from the year 1995 onwards and the amounts spent in advertising.
2. The plaintiff company started selling its products in India in late 1993 by shipping its products from the United States and thereafter from its Malaysian manufacturing plant. At first, the plaintiffs largest customer in India was its then distributor PCL, which in turn sold the plaintiffs products under the trademark DELL to end-users. In May 1996, the plaintiff set up a liaison office in India located at 4th Floor, Raheja Towers, M.G. Road, Bangalore. The liaison office in India was approved by the Reserve Bank of India by its letter dated 14th May, 1996 and the said approval was subsequently renewed on 16th July, 1999. The plaintiffs liaison office engages primarily in marketing and promotional activities such as working with DELL distributors and meeting with customers to reinforce the DELL brand name. The plaintiff has, in June 2000, also set up a company in India under the name Dell Computer Pvt. Ltd with Dell International Incorporated Ltd., USA as the foreign collaborator, with 100% equity participation amounting to US$ 2.5 million. This company, which is located in Bangalore, undertakes specialized after sales service, marketing and distribution of customized, high technology computer system and storage devices, computer consultancy and solutions, and software promotion. The plaintiff has previously provided these services under its trademark DELL through sub-contractors and distributors and in some cases directly through its non-Indian subsidiaries. The opening of the plaintiffs Indian subsidiary has expanded the plaintiffs presence even more, by allowing it to offer these services directly to customers from its location in India. The plaintiffs products are used by many leading software exporters and other organization in India. The plaintiffs key customers in India include but are not limited to Infosys Technologies, Satyam, India Oil Corporation, Tata Consultancy Services, Mastek, Times of India, Aspect Development, Aditi Technologies, GE Capital, AP Pollution Control Board, NITT and Novell Software. The plaintiffs trademark DELL is a popular brand name in India and various magazines in India, such as DATAQUEST and PC World and newspapers have carried features and advertisements on the plaintiff company and its success story has been the focus of these features. The plaintiffs have also extensively advertised in the print media in India and is now well known in India.
3. The plaintiff has registered the trade mark DELL in the USA under registration numbers 1498470,1616571,1860272 and 2236785 in classes 9 and 40, and has registered or applied to register more than 30 additional members of its DELL family of marks in the USA. The plaintiffs trademark DELL is registered in more than 130 countries including Canada and Great Britain. Numerous other marks of which the word DELL is an integral part, are registered or pending registration in various countries of the world. The plaintiff has also applied for registration of its trademark DELL in India. The plaintiff has made the following applications for the registration of its trademark DELL and other additional DELL marks in class 9, the details of which are as follows:
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MARK Application NO DATE OF FILING
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DELL 575115 15.6.1992
DELL WARE 598819 07.06.93
DELL PRECISION 805105 18.6.1998
Www.dell.com 826095 05.11.98
DELL (stylized E) 923915 10.05.00
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4. It is further pleaded that on account of long and continuous use, the trademark DELL has acquired a tremendous reputation and goodwill amongst the customers and the members of the Information Technology industry and has become distinctive of the plaintiff, not only in other counties but also in India. Thus, the use of the mark DELL in relation to computer systems, software and other computer-related products and services connotes and denotes the plaintiff alone. Consequently the plaintiff company has acquired exclusive common law rights in the trademark DELL. The unauthorized use of the mark DELL in isolation or in conjunction with any other word or log, by any other entity or organization, would cause confusion and deception in the minds of the general public at large about a connection or affiliation with the plaintiff. Consequently the use of the word DELL or any other trademark or trade name of which the word DELL is a part by any other entity, without the consent of the plaintiff, would amount to the tort of unfair competition namely passing off.
5. It is alleged that in March, 2001, the plaintiff company came across an entry in the Yellow pages directory for the company Dell Technologies at Bangalore address through its proprietor Arun Kumar, defendant No. 1. Plaintiff company through their attorneys sent a cease and desist letter dated 7th May, 2001 to the defendant No. 2 intimating that the plaintiff's exclusive rights in the mark DELL by virtue of their prior adoption and long user and adoption of the mark DELL as part of its trading name by the defendants is calculated to deceive the consumers. In response to the notice, there were a series of telephonic conversations between the parties for settlement and meetings were also held. However, the defendants wanted extra money for dropping the word DELL which is not acceptable to the plaintiff. Then in June, 2002 plaintiff discovered that the defendant No. 3 Ebiz Technologies had registered the domain name dell-technologies com. The printouts taken from the said website clearly demonstrate that the website promotes the business of the defendants 1 and 2. It is the contention of the plaintiff that the word DELL as part of its trading name adopted by the defendants amounts to deceive the general public and the trade into believing that the defendant's services/trade mark are connected or affiliated with the plaintiff. Hence this suit.
6. Defendants 1 and 2 did not put in appearance despite service of summons/notices. Accordingly, they were proceeded exparte vide order dated 25th October, 2002. Defendant No. 3 was served by way of publication in the edition of 'Deccan Herald" (published from Karnataka) dated 5th March, 2003. Since no one appeared on behalf of the Defendant No. 3, they were also proceeded exparte vide order dated 16th February, 2004.
7. Plaintiff has filed affidavit of Shri Henry N. Garrana, Vice President and Deputy General Counsel, Dell Incorporation and authorized representative of the plaintiff to institute, sign and verify the suit. In the affidavit Mr. Henry N. Garrana has substantiated the allegations contained in the plaint. He has also proved various documents namely copy of Resolution as Ex. PW-1/1, copy of the certificate reflecting the change of plaintiff s company name to Dell Inc. as Ex. PW-1/2; printout copy of Fortune 500 website as PW-1/3; copy of annual reports of the plaintiff company between the year 1995 and 2000 as Ex. PW-1/4; copies of extracts as Ex. PW-1/5 (colly.); various product brochures of the plaintiff as Ex. PW-1/6; various advertisements of the plaintiff circulated in India as Ex. PW-1/7; certificate of Incorporation of Dell Computer India Pvt. Ltd as Ex.PW-1/8; articles and advertisements pertaining to the plaintiff company published as Ex. PW-1/9 (colly); copy of chart reflecting the current trade mark portfolio as Ex.PW-1/10; copy of international trademark registrations of the plaintiff as Ex. PW-1/11; certificates for use in legal proceedings of trademarks DELL and DELL WARE as Ex PW-1/12 & PW-1/13; copies of trademark applications as Ex. PW/-1/14; copy of extracts of the Yellow pages relating to defendants 1 and 2 and their business card as Ex. PW-1/15 (colly); copy of notice as Ex. PW-1/16; copy of reminder as Ex. PW-1/17; a printout of e-mail as Ex. PW-1/18; copy of letter dated 7th September, 2001 forwarded a settlement to the defendant No. 1 as Ex.PW-1/19; a copy of letter dated 16th January, 2002 to defendants about a change of its name as Ex.PW-1/20; copy of defendant's e-mail dated 22nd January, 2002 as Ex.PW-1/21; copy of plaintiffs letter dated 25th January, 2002 as Ex.PW-1/22; a copy of defendant's e-mail dated 1st February, 2002 as Ex.PW-1/23; a copy of affidavit of Mr. Gurjot Singh, Technical Expert along with the print-out of the web pages of web-site as Ex.PW-1/24; copy of a print out of ownership details of domain name dell-technologies, com from the website of Networksolutions Inc. as Ex.PW-1/25 and copy of letter enclosed with the affidavit of Mr. Gurjot Singh as Ex.PW-1/26.
8. On 30th September, 2005, learned Counsel for the plaintiff submitted that he does not press the relief for damage and rendition of accounts.
9. In absence of any version or evidence to the contrary, there is no reason to disbelieve the plaintiffs version which is substantiated by the affidavits and documentary evidence referred to above.
10. Accordingly this suit is decreed ex parte with costs and a decree in terms of prayer Clause 32 (a) and (e) is hereby passed. Let the decree be drawn accordingly.
Suit & all pending applications stand disposed of.
