Delhi High Court
Tata Sons Limited vs T. Javed Ahmed on 5 July, 2011
Author: G. S. Sistani
15
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 605/2008
% Judgment Delivered on: 05.07.2011
TATA SONS LIMITED ..... Plaintiff
Through : Mr. Dhruv Anand, Mr. Achuthan
Sreekumar and Mr. Reuben Cheriyan,
Advs.
versus
T. JAVED AHMED ..... Defendant
Through : None.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
1. Whether the Reporters of local papers may be allowed to see
the judgment?
2. To be referred to Reporter or not?
3. Whether the judgment should be reported in the Digest?
G.S.SISTANI, J. (ORAL)
1. The plaintiff has filed the present suit for permanent injunction to
restrain the infringement of their trademark „TATA‟ by the
defendants who are operating under the trade name/mark, „TATA
MONEY‟ and for passing off, damages, rendition of accounts and
delivery up.
2. Despite service none appeared on behalf of the defendant and,
accordingly, the defendant was proceeded ex parte on 18.8.2008.
The plaintiff has filed an affidavit by way of evidence of Mr. V.
Gurumoorthi, PW-1. Mr. V. Gurumoorthi has identified his
signatures at points A and B on the affidavit and also tendered in
evidence documents i.e. Exhibits PW-1/1 to PW-1/17 filed along
with the affidavit. Mr. V. Gurumoorthi has exhibited the certified
true copy of the Power of Attorney as Ex.PW-1/1.
3. As per the plaint, the plaintiff company, established itself in the
year 1917 as a body corporate, is the principal investment holding
company of the TATA Group, which is India‟s oldest, largest and
best known conglomerate, with a turnover of over Rs.2,51,543/-
crores for the financial year 2007-2008. The TATA Group has been
ranked 6th in the list of World‟s 50 Most Innovative Companies by
Business Week for the year 2008. Further, TATA brand has also
been ranked 57th amongst top 100 brands worldwide, listed by
Brand Finance, an independent company focused on the
management and valuation of brands.
4. The following documents pertaining to the "well known" status,
reputation and goodwill enjoyed by the plaintiff company have
already been exhibited along with the evidence by way of affidavit
of Mr. V. Gurumoorthi, the Constituted Attorney of the plaintiff
company:
(a) Ex.PW-1/3 - Message dated 18th July, 1998 from the
then Hon‟ble Prime Minister of India, Shri. A.B. Vajpayee
on the 93rd Birth Anniversary of Late Shri J.R.D. Tata.
(b) Ex.PW-1/4 - Certificate of the Padma Bhushan
conferred on Shri Ratan Tata by His Excellency, the
President of India in March 2000.
(c) Ex.PW-1/5 - Brochure pertaining to write-up on a
postage stamp commissioned in Honour of Late Shri
J.R.D. Tata in 1994.
(d) Ex.PW-1/6 - A copy of a „brief note‟ on activities of
various group companies belonging to the House of
TATA
(e) Ex.PW-1/7 - Extracts from newspaper, articles and
magazine write-ups pertaining to the House of TATA.
(f) Ex.PW-1/8 - Group brochure of TATA along with
financial highlights.
(g) Ex.PW-1/10 - Order passed by this Hon‟ble Court in
Tata Sons Ltd. v. Mr. Suresh Jain & Ors.; CS(OS)No.1922
of 2003 recognizing TATA as a well-known trademark.
(h) Ex.PW-1/11 - Order dated 26th September, 2005 passed
by the Hon‟ble High Court of Sind at Karachi protecting
the trademark TATA
(i) Ex.PW-1/12 - Pamphlet issued by the Trademarks
Registry showing TATA as a well-known trademark.
5. Learned counsel for the plaintiff while relying on the documents
submits that the trademark of the plaintiff TATA is a "well known"
mark enjoying a high reputation and goodwill and has acquired pre
eminent excellence, expansive reputation and goodwill without
boundaries of classification. Counsel has drawn the attention of the
Court to the judgment dated 6.4.2009 passed in CS(OS)No.842/2002
titled as Tata Sons Ltd. v. A.K. Chaudhary & Ors., by virtue of
which, this Court was pleased to pass a decree awarding damages
to the tune of Rs.10.00 lakhs in favour of the plaintiff. Learned
counsel for the plaintiff has also relied upon a copy of write-up
dated 24.5.2009 titled "T for trust" appearing in "The Week"
magazine acknowledging the plaintiff as the world‟s Eleventh most
reputed company.
6. Learned counsel for the plaintiff submits that since inception in the
year 1917 the plaintiff company has been continuously and
consistently using the trademark and trade name TATA, which is a
rare patronymic name possessing the distinctiveness of an
invented word, for its own business activities and those of
companies promoted by it. The use of the trademark and name
TATA by the plaintiff‟s predecessors in business dates back to
1868. The name TATA has consistently been associated with, and
exclusively denotes the conglomeration of companies forming the
TATA group, colloquially also referred to as the "House of TATA".
The trademark TATA has become highly distinctive in character and
the plaintiff is its proprietor by virtue of priority in adoption, long,
continuous and extensive use and advertising and its consequent
reputation. Counsel submits that the House of TATA consists of
over 100 companies of which over 50 companies use TATA as a key
and essential part of their corporate name.
7. Learned counsel for the plaintiff submits that in addition to the
common law rights that have accrued to the plaintiff it is also the
registered proprietor of several TATA-formative trademarks in
relation to various goods across various classes. Certified true
copies of the „Certificates of Registrations‟ and a copy of extracts
from the „Trade Marks Journal‟ of the plaintiff‟s trademarks in Class
36 have already been exhibited as Ex.PW-1/9. Further, original
certificate for use in legal proceedings for the registered trademark
numbers 1236891, 1247046, 1269212, 1466072, 1425192,
1502952, 1425190 and 1425191 in Class 36 have been filed on 12 th
January, 2009.
8. Learned counsel for the plaintiff submits that sometime during
March, 2008, the plaintiff was informed by one Mr. Jayakumar, a
resident of Chennai, about defendant‟s recruitment advertisement
in "Deccan Chronicle", one of the leading local dailies in Chennai
under the name TATA MONEY. The plaintiff subsequently
authorized a quick investigation of the defendant which confirmed
the involvement of the defendant in infringing/illegal activities.
Counsel for the plaintiff has further averred that the defendant‟s
trademark is phonetically and visually identical to the plaintiff‟s
trade mark. Counsel also submits that thereafter the plaintiff
instituted the present suit against the defendant, who was
operating in services related to life insurance and credit cards
under the name TATA MONEY and an order of ex pate ad interim
injunction was passed by this Court in favour of the plaintiff on
4.4.2008. On 4.4.2008, this Court also appointed a Local
Commissioner to visit the premises of the defendant. As per the
report of the Local Commissioner, which has been exhibited as DW-
1/17, the following articles were found in the premises of the
defendant:
(a) Approximately 40 business cards of the
defendant bearing the name TATA MONEY;
(b) Approximately 110 letter heads of the defendant
bearing the name TATA MONEY;
(c) Approximately 400 single sided literature on the
insurance awareness programmes offered by the
defendant bearing the name TATA MONEY;
(d) A seal bearing the TATA MONEY mark;
(e) Various client profile forms; and
(f) Two bill books.
9. Learned counsel for the plaintiff has also relied upon the extracts of
original newspaper containing defendant‟s advertisement bearing
the trade mark/name TATA MONEY (Ex.PW-1/13); printout of e-
mails that the plaintiff company received from Mr. Jayakumar
informing about defendant‟s advertisement in the "Deccan
Chronicle" under the trademark/name TATA MONEY (Ex.PW-1/14);
photographs of defendant‟s premises carrying the billboard bearing
the trademark/name TATA MONEY (Ex.PW-1/15); and original
business card as received from the defendant (Ex.PW-1/16).
Plaintiff has prayed that the present suit be decided.
10.I have heard learned counsel for the plaintiff, perused the evidence
of Mr. V. Gurumoorthi, PW-1, and the documents, which have been
exhibited. The suit has been instituted by the duly constituted
Attorney of the plaintiff. A copy of the Power of Attorney has been
exhibited as PW-1/1, thus, the suit has been filed by duly
authorized person.
11.Learned counsel for the plaintiff relied upon the judgment dated
6.4.2009 titled as Tata Sons Ltd. (supra) whereby the Hon‟ble
Court was pleased to acknowledge TATA as a „well known‟
trademark. I have carefully gone through the judgment of the
learned Single Judge and respectfully agree with the same. The use
of the trade mark TATA by the defendant amounts to infringement
under section 29 of the Trade Marks Act, 1977 as the said trade
mark cannot be appropriated by any party in relation to any
merchandise goods/ services /trade name.
12.I am also satisfied that the trade mark TATA of the plaintiff is a well
known mark enjoying a high reputation and goodwill all over the
world and TATA companies are engaged in a wide spectrum of
activities using the trademark TATA and the said trademark has
come about to be exclusively recognized as a source indicator of
the goods and business of the plaintiff and the use of an identical
trade name by the defendant will create confusion and deception in
the minds of the purchasing public and members of the trade who
will be misled into hiring the services of the defendant.
13.The defendant‟s mark wholly contains the plaintiff‟s trade mark and
is phonetically and visually similar and can cause damage to the
plaintiff‟s well known trade mark by not only causing confusion but
also by taking advantage of the good will of the legendary name
TATA and reducing or diluting the power of the plaintiff‟s trade
mark to indicate the source.
14.I am satisfied that the adoption and use of the impugned trade
mark or name TATA Money by the defendant is deceptively similar
to the plaintiff‟s „well known‟ trade mark „TATA‟ and is a blatantly
dishonest and mala fide attempt by the defendant to derive unfair
advantage by creating an impression that its products emanate
from the plaintiff or have some connection, nexus, association,
affiliation with or endorsement from the plaintiff.
15.I am also satisfied that the use of plaintiff‟s trademark or name
TATA by the defendant amounts to false trade description under
sections 101 and 103 of the Trade Marks Act, as it is likely to lead
persons to the mistaken belief that the services that are provided
by the defendant are actually being provided by the plaintiff.
16.In the case of Time Incorporated v. Lokesh Srivastava,
reported at 2005 (30) PTC 3 (Del), the Court has recognized third
type of damages as punitive damages apart from compensatory
and nominal damages. The Court has held that:
"The award of compensatory damages to a plaintiff is
aimed at compensating him for the loss suffered by him
whereas punitive damages are aimed at deterring a
wrong doer and the like minded from indulging in such
unlawful activities...""
"This Court has no hesitation in saying that the time
has come when the Courts dealing actions for
infringement of trademark, copy rights, patents etc.
should not only grant compensatory damages but
award punitive damages also with a view to discourage
and dishearten law breakers who indulge in violations
with impunity out of lust for money so that they realize
that in case they are caught, they would be liable not
only to reimburse the aggrieved party but would be
liable to pay punitive damages also, which may spell
financial disaster for them."
17. In view of the fact that the evidence of the plaintiff is unrebutted
and having regard to the loss of business reputation and goodwill of
the plaintiff in the market, this Court is of the view that Rs.5.00
lakhs can be reasonably awarded to the plaintiff as compensatory
damages, besides another sum of Rs.5.00 lakhs as
punitive/exemplary damages as well as damages on account of loss
of reputation and damages to the goodwill. The suit of the plaintiff
is accordingly decreed in terms of para 21 (i), (ii) and (v) of the
plaint. The defendant is directed to destroy the goods/blocks/dies/
stationery/print out material bearing the trade mark TATA within
eight weeks from today. Let decree sheet be drawn up accordingly.
IA NOS.4051/2008 (O 39 R 1 & 2).
18. Application stands disposed of in view of the order passed in the
suit.
G.S. SISTANI, J.
JULY 05, 2011
'msr‟
