Delhi High Court
Casio India Co. Limited vs Ashita Tele Systems Pvt Ltd & Anr on 23 July, 2008
Author: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS)1209/2002
% Date of decision : 23.07.2008
CASIO INDIA CO. LIMITED ....... Plaintiff
Through: Mr Sanjay Jain, senior counsel
with Mr Gyanendra Kumar, Advocate.
Versus
ASHITA TELE SYSTEMS PVT ........ Defendants
LTD & ANR Ex parte.
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment?
2. To be referred to the reporter or not?
3. Whether the judgment should be reported
in the Digest?
RAJIV SAHAI ENDLAW, J
1. The senior counsel for the plaintiff while making final
arguments on 9th July, 2008 and as recorded in the order sheet of
that date has confined the claim in this suit to that of permanent
injunction for restraining the defendant No.1 from applying for
registration of the domain name with the word CASIO, with the
defendant No.2 or with any other agency.
2. The issue involved in the present suit is as to whether a
person can acquire a domain name with the name which is the
trademark of another party. The trade mark subject matter of the
present suit is CASIO. The plaintiff claims to be a 100% subsidiary
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of M/s Casio Computer Company Limited, Japan which is the
registered owner, including in India, of the trademark CASIO for
various products. The defendant No.1 registered the domain name
www.casioindia.com in its own name with the defendant NO.2 which
is the Registrar of domain names. The plaintiff instituted the
present suit objecting to the same. The plaintiff alongwith the suit
also filed an application for interim relief. The said application for
interim relief came to be decided by order dated 8th September,
2003 vide which it was held that the defendant No.1 cannot be
permitted to continue with the use of trademark and brand name
CASIO in its domain name and the defendant No1 was restrained
from using the name CASIO in its website www.casioindia.com. The
record reveals that the defendant No.1 preferred an appeal before
the Division Bench of this court against the said order but this
appeal was dismissed in default on 25th April, 2005. The following
issues were framed in this suit on 3rd March, 2005 :
1. Whether the suit is bad for non-joinder of necessary
parties? OPD
2. Whether the suit has not been properly valued for
purposes of court fee and jurisdiction? OPD
3. Whether the plaintiff does not have the locus standi to
maintain the present suit? OPD
4. Whether this court has no jurisdiction to entertain the
suit? OPD
5. Whether the suit is barred by limitation? OPD
6. Whether the domain name of the defendants is identical
and confusingly similar to the plaintiff's trade mark? OPP
7. Whether the defendant No.1 has no right or legitimate
interest in respect of the domain name in question? OPP
8. Whether the domain name was registered in favour of the
plaintiff and is being used by the defendants in bad faith?
OPP
cs(os)1209/2002 page no.2 of 5
9. Whether defendant No.1 is gaining illegal and
unauthorized benefit out of illegal usage of the domain
name to the detriment of the plaintiff? OPP
10. To what relief is the plaintiff entitled.
3. The defendant No2 did not contest the suit. The defendant
No.1 also stopped appearing w.e.f. 8th August, 2006 and were
proceeded ex parte on 6th September, 2006 and remain ex parte.
The plaintiff led ex parte evidence by filling affidavit by way of
examination-in-chief. The senior counsel for the plaintiff during the
course of hearing further informed that the defendant No.1 has
pursuant to the order dated 8th September, 2003 (supra) already de-
registered the objectionable domain name. The apprehension of the
plaintiff is that the defendant No.1 may again apply for registration
of domain name with the trademark of the plaintiff with some other
agency or even with the defendant No.2 in the event of any delay on
the part of the plaintiff in renewing the registration of its domain
name.
4. The matter has been considered at length in the order dated
8th September, 2003 on the interim relief claimed by the plaintiff.
The defendant has thereafter not led any evidence and has not even
cross examined the witness of the plaintiff. There is thus no change
in position as existed on 8th September, 2003. Even though in the
absence of defendant issue-wise finding is not required, it is noted
that onus of issues 1 to 5 was on the defendant, which has not been
discharged.
5. The name CASIO has a transborder reputation. There can be
no doubt that the defendant No.1 if permitted to use the word
cs(os)1209/2002 page no.3 of 5
CASIO in its domain name would be able to deceive the public at
large and the public at large is likely to believe that the
goods/services offered by the defendant No.1 are sponsored by the
plaintiff. This is not the position. It is the case of the plaintiff that
though at one time the proprietor of the defendant No.1 was
appointed as the distributor of the plaintiff but the said agreement
has now come to an end and the defendant No.1 has no
authorization to represent himself to be connected with the plaintiff
in any manner whatsoever. This court has, while dealing with the
prayer of the plaintiff for interim relief, held that if the defendant is
permitted to carry on business under a name which is sufficiently
close to the name under which the plaintiff is trading and that name
has acquired reputation, the public at large is likely to be misled
that the defendants' business is the business of the plaintiff or is a
branch or department of the plaintiff and the defendant in such a
case becomes liable for an action in passing off. The mode of
carrying on business, is increasingly shifting to internet and if the
defendant is permitted to have the trademark of the plaintiff in its
domain name, as aforesaid, the defendant No1 would be able to pass
off its goods and services as that of the plaintiff and which cannot be
permitted in law. I hold that the domain name earlier adopted by
the defendant is identical and confusingly similar to the trade mark
of the plaintiff. The witness of the plaintiff has proved that Casio,
Japan is the registered owner of trade mark Casio in India and has
registered several domain names like casio.com, world.casio.com,
casio.at, etc; that the plaintiff is 100% subsidiary of Casio, Japan and
has exclusive right to use trademark Casio in India. I hold that the
cs(os)1209/2002 page no.4 of 5
plaintiff is entitled to maintain this suit and the defendant has no
right or legitimate interest in the domain name earlier adopted and
further hold that the defendant had registered and used the same in
bad faith and unless restrained from use in future will derive illegal
advantage for itself and to the detriment of the plaintiff.
6. I, therefore, pass a decree of permanent injunction in favour of
plaintiff restraining the defendant No.1 and its employees, agents,
nominees, assigns from using the trademark/name CASIO as a
domain name and further restraining the defendant No.1 from
registering any domain name with the defendant No.2 or with any
other agency with the word CASIO alone or in conjunction with any
other word and/or deceptively similar thereto. However, in the facts
of the case, the plaintiff is left to bear its own costs. The decree
sheet be prepared accordingly.
RAJIV SAHAI ENDLAW, J.
July 23, 2008.
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