Delhi High Court
Tata Sons Limited & Anr vs Rama Nerusu & Ors on 4 February, 2010
Author: S.Ravindra Bhat
$~6
* IN THE HIGH COURT OF DELHI AT NEW DELHI
DECIDED ON: 04.02.2010
+ CS (OS) 1105/2008, I.A. Nos.6983/2008,
6984/2008 & 12039/2009
TATA SONS LIMITED & ANR ..... Plaintiffs
Through: Mr. Pravin Anand with
Mr. Achuthan Sreekumar, Advocates.
versus
RAMA NERUSU & ORS ..... Defendants
Through: None.
CORAM:
MR. JUSTICE S. RAVINDRA BHAT
1.
Whether the Reporters of local papers YES
may be allowed to see the judgment?
2. To be referred to Reporter or not? YES
3. Whether the judgment should be YES
reported in the Digest?
MR. JUSTICE S.RAVINDRA BHAT (OPEN COURT)
% The plaintiffs in the present suit for permanent injunction and other consequential reliefs
such as damages, rendition of accounts, delivery up etc. complain of infringement of the
registered trademarks "TATA" & "TISCO", by the defendants. They also seek decree for
permanent injunction to restrain the defendants from using the domain name www.tiscousa.com.
2. The suit contends that the first plaintiff was established in 1917 and is a principal
investment holding company of the TATA Group of companies with a turnover of Rs.251543
crores as on 2007-2008. The certificate of incorporation of the first plaintiff has been produced
CS (OS) 1105/2008 Page 1
as Ex.PW-1/2. It is stated that the TATA Group is ranked at the 6th position in the list of world‟s
50 most innovative companies by a finance weekly, for the year 2008 and that the TATA brand
has been ranked at the 57th position among the top 100 brands worldwide by Brand Finance. The
plaintiffs rely on Ex.PW-1/3, PW-1/11, PW-1/12, PW-1/13, PW-1/15 and PW-1/16 as well as the
certain orders of this Court to assert that its trademarks can be classified as "well known marks",
within the meaning of Section 2 (i) (zg) of the Trademarks Act, 1999 (hereafter referred to as
"the Act"). The plaintiff No.1‟s website is "TATA.COM"; the same is supported by the
documentary evidence in the form of PW-1/3. The second plaintiff (hereafter referred to as
TISCO) is a part of the TATA Group, was incorporated in 1907 and is a large steel company
with an existing annual crude steel capacity of 28 million tonnes, it claims to be sixth largest
steel producing company in the world. The suit lists commendations and laudatory references in
respect of TISCO and several awards received by it for the excellence of its products and
services. The plaintiffs rely on several documents in this regard, i.e. Ex.PW-1/5 - Ex.PW-1/10.
It is stated that the second plaintiff also has business activities within the jurisdiction of this
Court.
3. The plaintiffs contend that since inception in the year 1917, the companies within the
TATA banner, used the rare patronymic name possessing the distinctiveness to be an invented
word. The group companies are known as "House of TATAs" or "TATA GROUP".
4. It is alleged that TISCO learnt, in May, 2008 about the defendants‟ activities and that the
latter were operating their business under the name "TISCO" and domain name
www.tiscousa.com. The print outs of the said website have been produced in the list of
documents and exhibited as Ex.PW-2/5. It is alleged that the TATA‟s distinctive trademark with
a prominent stylized „T‟ in a circle device has also been exhibited prominently in the defendants‟
CS (OS) 1105/2008 Page 2
website. In support, the plaintiffs have produced a copy of the website as Ex.PW-2/6. It is stated
that the use of the TATA mark and distinctive device with a „T‟ in a circle is a blatant attempt to
appropriate the plaintiffs‟ mark and a clear instance of infringement.
5. The defendants were served and had initially appeared in the proceedings. Later due to
their non-representation, they were set down ex parte by order dated 10.12.2008. The plaintiffs
were directed to lead ex parte evidence. Accordingly, the plaintiffs filed the affidavit evidence
of Mr. V. Gurumurthy, constituted attorney of the first plaintiff and the affidavit of Mr. D.C.
Sharma, Chief Investigator engaged by the plaintiff. PW-1 marked the documents as exhibits.
Both the witnesses deposed in favour of the suit averments.
6. The Court has considered the submissions. The defendants have, despite service, not
cared to contradict the suit allegations.
7. The website - copies of the photographs whereof have been produced by the plaintiffs,
clearly depicts the distinctive and stylized „T‟ within an oval device; the defendants also used the
word mark TISCO. In the „Contact Us‟ drop box, which is part of the defendants‟ website, the
representation made clearly is that the so called „TISCO Group‟ has its office in Hyderabad. A
comparison of the plaintiffs‟ mark, i.e. the registered device TATA in Ex.PW-1/3 with the
defendants‟ mark clearly shows that the latter is identical to the former and is in fact a slavish
imitation. Furthermore, the word TATA has also been copied. In these circumstances, the Court
is satisfied that the use of the TATA word mark as well as the device, amounts to clear
infringement in terms of Section 29 (1) and (2) as well as Section 29 (5) of the Act. This entitles
the plaintiffs for the relief of permanent injunction, as sought so far as injunction in respect of the
use of the said trade mark, as well as the domain name.
8. As far as the reliefs of delivery up, rendition of accounts and damages are concerned,
CS (OS) 1105/2008 Page 3
there is no empirical evidence to show the degree of harm which has resulted by the defendants‟
use of the impugned mark. Nevertheless, the Court cannot be unmindful of the propensity of
such use leading to confusion especially in the present information technology driven market
place. In these circumstances, even while, not granting the damages, the Court is of the opinion
that the plaintiffs would be entitled to substantial costs.
9. In view of the above discussion, the Suit is decreed in terms of paragraphs-28 (a), (b) &
(c) with costs quantified @ Rs.1,00,000/- (Rs. One lakh).
10. Let a decree in these terms be drawn.
11. All the pending applications are also disposed of.
S. RAVINDRA BHAT
(JUDGE)
FEBRUARY 04, 2010
/vd/
CS (OS) 1105/2008 Page 4
