Delhi High Court
Tata Sons Ltd. vs Manoj Dodia & Ors. on 28 March, 2011
Author: V. K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 23.3.2011.
Judgment Pronounced on: 28.3.2011.
+ CS(OS) No. 264/2008
TATA SONS LTD. .....Plaintiff
- versus -
MANOJ DODIA & ORS. .....Defendant
AND
CS(OS) No. 232/2009
TATA SONS LTD. .....Plaintiff
- versus -
MR. MD. JAWED & ANR. .....Defendants
Advocates who appeared in this case:
For the Plaintiff: Mr. Pravin Anand and Mr. Reuben
Cheriyan.
For the Defendants: None.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1. Whether Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported Yes
in Digest?
V.K. JAIN, J
1. These are suits filed by Tata Sons Ltd. for
CS(OS)Nos.264/2008 & 232/2009
Page 1 of 37
permanent injunction, damages, rendition of accounts and
delivery of the infringing materials. The plaintiff company,
which was established in the year 1917, is the principal
investment holding company of the Tata Group which had a
turnover of Rs.96,000 crores for the year 2005-2006 and is
stated to be one of India‟s most trusted business houses.
The name TATA is stated to have been derived from the
surname of its founder Mr. Jamsetji Nusserwanji Tata. For
the year 2006, Tata Group was also ranked as 20th amongst
world‟s most reputed companies. The name TATA is being
used by the plaintiff company since its inception in the year
1917 and it is claimed that on account of its highly
descriptive nature and pioneering activities of the founder,
the name TATA has consistently been associated with and
exclusively denotes the conglomeration of companies
forming the Tata Group, which is known for high quality of
products manufactured and/or services rendered by it
under the trade mark/name TATA. The House of Tatas
comprises of over 100 companies of which over 50
companies use TATA as a key and essential part of their
corporate name. It is claimed that being proprietor of the
trade mark TATA, the plaintiff company enjoys exclusive
CS(OS)Nos.264/2008 & 232/2009
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rights in the aforesaid mark. The plaintiff company claims
to be owner of various trademarks which contain the name
TATA as a part of the registered trademark. It is alleged
that on account of continuance and extensive use of the
plaintiff‟s trade mark TATA over a long period of time
spanning a wide geographical area, coupled with vast
promotion and publicity, the said trademark enjoys an
unparalleled reputation and goodwill and has acquired the
status of a "well known" trademark.
2. The defendants in Suit No.264/2008 Mr.Manoj
Dodia and Mr. Manish Dodia are stated to be co-owners of
M/s. Durga Scale Co., which is engaged in the business of
manufacturing and selling weighting scales and spring
balances under the trade mark A-One TATA. It is claimed
that use of the aforesaid mark by the defendants amounts
to infringement of plaintiff‟s registered trade mark TATA,
granted wide various registrations in class 9. It is further
alleged that the impugned mark is inherently deceptive and
constitutes a misrepresentation to unwary consumers that
goods of the defendants are either of the plaintiff company
or approved by it. Such misrepresentation, according to the
plaintiff, will inevitably lead to confusion or deception in the
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mind of the unsuspecting buyers and will result in the
defendants poaching on the plaintiff‟s business, goodwill
and reputation, thereby amounting to passing off. The
plaintiff has accordingly sought an injunction restraining
the defendants from manufacturing, selling, offering for
sale, advertising, and directly or indirectly dealing in
weighting scales and springing balances or goods of any
description bearing the trademark A-ONE TATA or any other
mark confusingly similar to trade mark TATA amounting to
passing off the defendants‟ goods as that of the plaintiff‟s. It
has also sought delivery up of all the goods bearing the
impugned mark, dies, blocks, cartons, labels and any other
infringing material, to the authorized representatives of the
plaintiff, for the purposes of destruction. The plaintiff
company has also sought damages amounting to
Rs.20,05,000/- besides rendition of accounts in respect of
the profits earned by them from use of the trademark A-One
TATA.
3. CS(OS) No.232/2009 has been filed by Tata Sons
Limited against Mohd. Jawed and TATA Points. Mr. Mohd.
Jawed is stated to be working under the name and style of
TATA Points. In this case, it is also alleged that the name
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`TATA‟ either singularly or in conjunction with other names
as well as TATA device have been registered in the name of
the plaintiff Company in respect of different products in
Class 12. It is also alleged that besides the trade mark
`TATA‟, the plaintiff company is also the proprietor of the
device which contains „T‟ in a circle (device).
The defendant in this suit is alleged to be engaged
in the business of selling spare parts for automobiles. It is
also alleged that the visiting cards of the defendants bears
the trade mark `TATA‟ as also the device, which contains „T‟
in a circle (device).
4. The defendants in both the suits are ex parte.
In Suit No.264/2008 the plaintiff has filed the
affidavit of Mr. V. Gurumoorthi, Constituted Attorney of
plaintiff No.1, by way of evidence. In his affidavit Mr.
Gurumoorthi has stated that plaintiff Tata group had a
turnover of Rs.2,51,543/- Crores for the year 2007-08 and
is one of the most trusted business houses in the Country.
He has claimed that the name/trademark TATA is a
household name, synonymous with excellence in almost
every field of business activity and the enterprises promoted
by Tata operate in various core sectors, including iron and
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steel, textile power, chemicals, hotel, automobile, computer,
telecommunications, financial services and mutual funds,
etc. and the use of trademark and the name TATA by
predecessors of the plaintiff dates back to 1868. According
to him, house of Tatas consists of over 100 companies of
which more than 50 companies use TATA as a key and
essential part of their corporate names. He claims that the
plaintiffs are proprietors of the trademark TATA on account
of priority in adoption, long, continuous and extensive use
and advertising and the reputation accruing thereto in the
course of trade. He has stated that the plaintiffs and its
group companies use TATA as a trademark so as to indicate
that these companies have been promoted by the house of
Tatas. Similar affidavit has been filed by Mr. V.
Gurumoorthi in suit No.232/2009.
5. A well known trademark is a mark which is widely
known to the relevant general public and enjoys a
comparatively high reputation amongst them. On account
of advancement of technology, fast access to information,
manifold increase in international business, international
travel and advertising/publicity on internet, television,
magazines and periodicals, which now are widely available
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throughout the world, of goods and services during
fairs/exhibitions, , more and more persons are coming to
know of the trademarks, which are well known in other
countries and which on account of the quality of the
products being sold under those names and extensive
promotional and marketing efforts have come to enjoy
trans-border reputation. It is, therefore, being increasingly
felt that such trademark needs to be protected not only in
the countries in which they are registered but also in the
countries where they are otherwise widely known in the
relevant circles so that the owners of well known
trademarks are encouraged to expand their business
activities under those marks to other jurisdictions as well.
The relevant general public in the case of a well
known trademark would mean consumers, manufacturing
and business circles and persons involved in the sale of the
goods or service carrying such a trademark.
6. The doctrine of dilution, which has recently gained
momentus, particularly in respect of well known trademarks
emphasises that use of a well known mark even in respect
of goods or services, which are not similar to those provided
by the trademark owner, though it may not cause confusion
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amongst the consumer as to the source of goods or services,
may cause damage to the reputation which the well known
trademark enjoys by reducing or diluting the trademark‟s
power to indicate the source of goods or services.
7. Another reason for growing acceptance of trans-
border reputation is that a person using a well known
trademark even in respect of goods or services which are not
similar tries to take unfair advantage of the trans-border
reputation which that brand enjoys in the market and
thereby tries to exploit and capitalize on the attraction and
reputation which it enjoys amongst the consumers. When a
person uses another person‟s well known trademark, he
tries to take advantage of the goodwill that well known
trademark enjoys and such an act constitutes an unfair
competition.
8. The concept of confusion in the mind of consumer
is critical in actions for trademark infringement and passing
off, as well as in determining the registrability of the
trademark but, not all use of identical/similar mark result
in consumer confusion and, therefore, the traditionally
principles of likelihood of confusion has been found to be
inadequate to protect famous and well known marks. The
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world is steadily moving towards stronger recognition and
protection of well known marks. By doing away with the
requirement of showing likelihood of confusion to the
consumer, by implementing anti-dilution laws and
recognizing trans-border or spill over reputation wherever
the use of a mark likely to be detrimental to the distinctive
character or reputation of an earlier well known mark.
Dilution of a well known trademark occurs when a well
known trademark loses its ability to be uniquely and
distinctively identify and distinguish as one source and
consequent change in perception which reduces the market
value or selling power of the product bearing the well known
mark. Dilution may also occur when the well known
trademark is used in respect of goods or services of inferior
quality. If a brand which is well known for the quality of the
products sold or services rendered under that name or a
mark similar to that mark is used in respect of the products
which are not of the quality which the consumer expects in
respect of the products sold and/or services provided using
that mark, that may evoke uncharitable thoughts in the
mind of the consumer about the trademark owner‟s product
and he can no more be confident that the product being
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sold or the service being rendered under that well known
brand will prove to be of expected standard or quality.
9. Article 6bis of Paris Convention, 1967 enjoined
upon the Countries of the Union, subject to their legislation
so permitting or at the request of the interested parties, to
refuse or to cancel the registration and to prohibit the use of
trademark which constitutes a representation and imitation
or translation liable to create confusion of a mark
considered by the competent authority of the country of
registration or use to be well known in that country as being
already the mark of a person entitled to the benefits of
Convention and used for identical or similar goods. This
provision was also to apply when the essential part of the
mark constituted a reproduction of any such well known
mark or an imitation liable to create confusion therewith.
The prohibition against use of a well known trademark,
under Paris Convention, was, thus, to apply only when the
impugned use was in respect of identical or similar goods.
Vide Article 16 of TRIPS Agreement 1994, it was decided
that Article 6bis of Paris Convention, 1967 shall apply
mutatis mutandis to services as well as to goods or services,
which are not similar to those in respect of which a
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trademark is registered, provided that the use of that
trademark in relation to those goods or services would
indicate a connection between those goods or services and
the owner of the registered trademark and the interests of
the owner of the registered trademark and are likely to be
damaged by the impugned use. It was further decided that
in determining whether the trademark is well known, the
members shall take account of the knowledge of the
trademark in relevant sectors of the public, including
knowledge in the member concerned which has been
obtained as a result of the promotion of the trademark.
Thus, the TRIPS Agreement, 1994 brought about a material
change by prohibiting use which constitutes a
representation or imitation and is likely to create confusion
even if such use is in relation to altogether different goods
or services, so long as the mark alleged to have been
infringed by such use is a well known mark. This Article,
thus, grants protection against dilution of a trademark,
which may be detrimental to the reputation that the
business carried under a well known trademark enjoys.
10. Well known marks and trans-border reputation of
brands was recognized by Courts in India, even before Trade
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Marks Act, 1999 came into force. In Daimler Benz.
Akietgesellschaft v. Hybo Hindustan, AIR 1994 Del 239,
the manufacturers of Mercedes Benz sought an injunction
against the defendants who were using the famous „three
pointed star in the circle‟ and the word „Benz‟. The Court
granted injunction against the defendants who were using
these marks for selling apparel. Similarly, in Whirlpool Co.
& Another v. N.R. Dongre, (1996) PTC 415 (Del.), the
plaintiff Whirlpool had not subsequently registered their
trademark after the registration of the same in 1977. At the
relevant time, the plaintiff had a worldwide reputation and
used to sell their machines in the US embassy in India and
also advertised in a number of international magazines
having circulation in India. However, the defendant started
using the mark on its washing machines. After an action
was brought against them, the Court held that the plaintiff
had an established „transborder reputation‟ in India and
hence the defendants were injuncted from using the same
for their products. In the Kamal trading Co. vs. Gillette
UK Limited,(1998 IPLR 135), injunction was sought
against the defendants who were using the mark 7'O Clock
on their toothbrushes. This was further reaffirmed by the
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Bombay High Court, which held that the plaintiff had
acquired an extensive reputation in all over the world
including India by using the mark 7'O Clock on razors,
shaving creams. The use of an identical mark by the
defendant would lead to the customer being deceived.
11. The Trade Marks Act, 1999 accords a statutory
protection to well known marks, irrespective of whether they
are Indian marks or foreign marks. Section 29(4) of Trade
Marks Act, 1999, which is relevant in this regard, reads as
under:-
29(4) A registered trade mark is infringed
by a person who, not being a registered
proprietor or a person. using by way of
permitted use, uses in the course of trade,
a mark which-
(a) is identical with or similar to the
registered trade mark; and
(b) is used in relation to goods or services
which are not similar to those for which the
trade mark is registered; and
(c) the registered trade mark has a
reputation in India and the use of the mark
without due cause takes unfair advantage
of or is detrimental to, the distinctive
character or repute of the registered trade
mark.
Section 11(6) which deals with determination of
trademark as a well known marks, reads as under:-
CS(OS)Nos.264/2008 & 232/2009
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11(6) The Registrar shall, while
determining whether a trade mark is a
well-known trade mark, take into account
any fact which he considers relevant for
determining a trade mark as a well-known
trade mark including -
(i) the knowledge or recognition of that
trade mark in the relevant section of the
public including knowledge in India
obtained as a result of promotion of the
trade mark;
(ii) the duration, extent and geographical
area of any use of that trade mark;
(iii) the duration, extent and geographical
area of any promotion of the trade mark,
including advertising or publicity and
presentation, at fairs or exhibition of the
goods or services to which the trade mark
applies;
(iv) the duration and geographical area of
any registration of or any publication for
registration of that trade mark under this
Act to the extent they reflect the use or
recognition of the trade mark;
(v) the record of successful enforcement of
the rights in that trade mark, in particular,
the extent to which the trade mark has
been recognised as a well-known trade
mark by any court or Registrar under that
record.
Sub-Section (7) of Section 11 of the Trademarks
Act, 1999 specifies the factors which the Registrar has to
take into account while determining whether a trademark is
known to the relevant section of the public or not and reads
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as under:-
"(7) The Registrar shall, while
determining as to whether a trade mark
is known or recognised in a relevant
section of the public for the purposes of
sub-section (6), take into account-
(i) The number of actual or
potential consumers of the
goods or services;
(ii) The number of persons
involved in the channels of
distribution of the goods or
services;
(iii) The business circles dealing
with the goods or services,
To which that trade mark applies."
Sub-section 9 of Section 11 circumscribes the
power of Registrar while determining whether the trademark
is a well known trademark and reads as under:-
11(9) The Registrar shall not require as a
condition, for determining whether a
trade mark is a well-known trade mark,
any of the following, namely: -
(i) that the trade mark has been used in
India;
(ii) that the trade mark has been
registered;
(iii) that the application for registration of
the trade mark has been filed in India;
(iv) that the trade mark -
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(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for
registration has been filed in, any
jurisdiction other than India; or
(v) that the trade mark is well-known to
the public at large in India.
12. The owner of a well known trademark may (i) seek
cancellation or (ii) prevent registration of a trademark which
is same or similar to the well known mark irrespective of
whether the impugned mark is in relation to identical or
similar goods or services or in relation to other categories of
goods or services. He may also prevent others from
incorporating the well known trademark as a part of their
corporate name/business name. Even if a well known
trademark is not registered in India, its owner may avail
these rights in respect of the trademark registered/used or
sought to be registered/used in India, provided that the well
known mark is otherwise known to or recognized by the
relevant section of public in India.
The existence of actual confusion or a risk of
confusion is, however, necessary for the protection of a well
known trademark, as a result of infringement.
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13. Trademarks Act, 1999 does not specify the factors
which the Court needs to consider while determining
whether a mark is a well known mark or not, though it does
contain factors which the Registrar has to consider whether
a trademark is a well known mark or not. In determining
whether a trademark is a well known mark or not, the Court
needs to consider a number of factors including (i) the
extent of knowledge of the mark to, and its recognition by
the relevant public; (ii) the duration of the use of the mark;
(iii) the extent of the products and services in relation to
which the mark is being used; (iv) the method, frequency,
extent and duration of advertising and promotion of the
mark; (v) the geographical extent of the trading area in
which the mark is used; (vi) the state of registration of the
mark; (vii) the volume of business of the goods or services
sold under that mark; (viii) the nature and extent of the use
of same or similar mark by other parties; (ix) the extent to
which the rights claimed in the mark have been successfully
enforced, particularly before the Courts of law and
trademark registry and (x) actual or potential number of
persons consuming goods or availing services being sold
under that brand. A trademark being well known in one
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country is not necessarily determinative of its being well
known and famous in other countries, the controlling
requirement being the reputation in the local jurisdiction.
14. It is difficult to dispute that as far as India is
concerned, TATA is almost a household name. The house of
TATAs is one of the oldest business houses in our country
and the group has substantial presence in a large number
of sectors. In Class 9 alone, the plaintiff company owns a
large number trademark registrations of TATA (word mark),
TATA (device) and TATA in combination with other words in
respect of various products, vide registration/application
Nos. 1191250, 109358, 92645, 569377, 569381, 585717,
585718, 6089, 1191270, 1191260, 1191230, 1191240,
1191280, 1135862 and 1135860.
15. In class 12, there are as many as 23 registration of
the mark TATA (word mark), TATA (device) and TATA in
conjunction with other words in respect of various products
coming in that class. These are registrations/application
Nos. 108623, 108624, 108625, 180058, 569378, 569382,
585377, 585376, 838428, 839729,1191263, 1191253,
1191273, 1191233, 1191243, 1191283, 1315215, 1315216,
1315217, 1501279, 1502954, 1533728 and 1536338 . The
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additional affidavit filed by the plaintiff on 23 rd March, 2011
shows that the word mark TATA alone has been registered
in Class 1 to 16, 19, 20, 21, 22, 25, 26, 29 to 32 and 35 to
42 vide registration Nos. 92655, 92649, 131196, 569389,
6091, 92647, 585055, 92651, 92644, 362741, 450770,
362742, 569376, 585057, 558466, 92643, 585714, 6089,
92645, 569377, 585717, 1033579, 1033585, 1033588,
1033591, 1033597, 1033600, 1033603, 1033606, 585061,
585720, 299110, 92642, 562934, 838431, 839732, 585723,
585724, 585725, 752454, 1590660, 1033578, 1033581,
1033584, 1033590, 1033593, 1033596, 1033602, 1033605,
6090, 92646, 839737, 92652, 92652, 92648, 92653,
585066, 839739, 585383, 839743, 92652, 585728,
1033577, 1033580, 1033592, 1033595, 1033601, 1033604,
1033607, 907791, 92653, 569862, 585734, 1236890,
1236891, 1236892, 1236893, 1615092, 1615094, 1236894,
1236895, 1236896 and 1236897.
The plaintiff company claims to be having
agreements called TATA Brand Equity and Business
Promotion Agreements with a large number of group
companies whereby a particular code of conduct needs to be
followed by those companies in all their dealings. TATA
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group of companies includes a number of large companies
such as TISCO, Tata Motors Ltd., Tata Metaliks Limited,
Tata Cummins Ltd., Tata Tea Limited, Tata Housing
Development Company Ltd., Tata Finance Limited, Tata AIG
Risk Management Services Ltd., Tata Consultancy Services
(TCS), Tata Teleservices, Tata Honeywell Limited and Tata
Infotech Limited.
16. In CS(OS) No.1922/2003 decided on 14 th
September, 2004, this Court observed that the trademark
TATA has become a household name not only in India but
throughout the world and, therefore, is well known as
contemplated in Section 11 (6) of Trademarks Act, 1999.
Interim orders have been passed by this Court in a number
of cases upholding the trademark TATA of the plaintiff
company. In Tatara Tea Company. Peshawar v. TATA
Sons Ltd. & Registrar of Trade Marks, Karachi, IPLR
2005 October 221, the High Court of Sindh upheld the
order of Registrar of Trademarks, Karachi dismissing the
application for registration of the appellant‟s trademark
TATARA tea on label, when the proposed registration was
opposed by Tata Sons Limited. The respondent before the
High Court had contended that due to wide and extensive
CS(OS)Nos.264/2008 & 232/2009
use of its registered trademark for many years and wide
publicity given in many countries, it had acquired immense
popularity and valuable goodwill all over the world and its
goods were known by the famous trademark TATA.
The documents filed by the plaintiff company show
that TATA has been included amongst topmost valuable
global brands and is the only Indian brand in the list. The
brand TATA ranked 103 in the year 2007, secured rank 57
in the year 2008 and 51 in the year 2009. There was a
slippage in the year 2010 and it came to rank 65 but it not
only regained but also improved its position in the year
2011 by securing rank 50.
In CS(OS) No.842/2002 (TATA Sons Ltd. v. A.K.
Chaudhary & another) decided on 6th April, 2009, this
Court was of the view that the trademark TATA is a well
known trademark within the meaning of Section 2(z)(b) of
the Trade Marks Act, 1999, on account of its distinctiveness
and residual goodwill and reputation and cannot be
appropriated by any party in India in relation to any
merchandise goods/services/trade name.
17. Considering that (a) the mark TATA whether word
mark or device or in conjunction with other words is being
CS(OS)Nos.264/2008 & 232/2009
used for last more than 100 years, in respect of a large
number of goods and services, (b) Tata Group, which is
probably the oldest and largest industrial and business
conglomerate having turnover of Rs.96,000 crores in the
year 2005-06, Tata Group comprises a number of large
companies, millions of consumers are using one or more
Tata products throughout India, but also in other countries,
(c) there are more than hundred registrations of the
trademark TATA either by way of word mark or device or
use of the name TATA with other words, (d) the Courts
having in a number of judgments/orders recognized TATA
as a well known mark, (e) there is no evidence of any other
person holding registration of or using the trademark TATA
and (f) the reputation which companies of TATA group
enjoys not only in India but also in many other countries, it
is difficult to dispute that the trademark TATA is a famous
and well known brand in India. I, therefore, have no
hesitation in holding that the mark TATA whether word
mark or device or when use in conjunction with some other
words is a well known trademark within the meaning of
Section 2(z)(b) of the Trademarks Act, 1999. The use of the
trademark TATA in relation to any goods or services is,
CS(OS)Nos.264/2008 & 232/2009
therefore, likely to be taken as a connection between house
of TATAs and the goods or services, which are sold under
this trademark or a trademark which is similar to it.
18. Section 29(1) of the Trademarks Act, 1999, to the
extent it is relevant, provides that a registered trademark is
infringed by a person, who is neither registered proprietor
of the trademark nor has his permission to use the mark
but still decides to use that mark or a mark which is
identical or deceptively similar to the registered trademark
in relation to goods or services in respect of which the
trademark is registered and such use of the mark likely to
be taken as use as a trademark. Sub-section 2 of Section
29, to the extent it is relevant, provides that if a registered
trademark is used by a person, who is neither its proprietor
nor has permission from the registered proprietor for its
use, uses that mark in the course of a trade which because
of its identity with the registered trademark and similarity of
the goods or services covered by such registered trademark
or its similarity to the registered trademark and the
similarity of or identity of the goods or services covered by
such registered trademark or its identity with the registered
trademark and the identity of the goods or services covered
CS(OS)Nos.264/2008 & 232/2009
by such registered trademark is likely to cause confusion on
the part of the public or have an association with the
registered trademark, he infringes the registered trademark.
19. In CS(OS) No.264/2008, a Local Commissioner
was appointed by this Court to visit the premises of the
defendant to search and seize the infringing material. The
Local Commissioner accordingly visited the premises of the
defendant on 15th February, 2008 and seized a large
number of articles which include 1000 stickers, 400
aluminum strips (labels), 70 weighing scales and 1 die, all
bearing the trademark TATA. The photographs of the
products of the defendants, which are Exhibit PW1/22 show
that the weighing machines and spring balance are being
sold by the defendant under the name A-ONE TATA, the
word „A-ONE‟ being smaller than the word TATA. It is also
noticed that the letter „A‟ in the word TATA is not the regular
letter „A‟, horizontal bar in the regular letter „A‟ having been
removed, as has been done in the case of registered
trademark of the plaintiff company, thereby giving an
impression that the product being sold by the defendant
was a TATA product or had an association with Tatas. The
defendant in this suit has incorporated the whole of the
CS(OS)Nos.264/2008 & 232/2009
trademark of the plaintiff by using the word TATA along
with the word A-ONE on the products being sold by him.
The trademark TATA has been registered in favour of the
plaintiff company, in respect of weighing scales vide
registration No.1191250. The defendants, therefore, have
used the mark of the plaintiff in respect of the
same/identical/similar goods, which are covered by
plaintiffs registered trademark TATA and such a use is likely
to cause confusion in the mind of the consumers, as to the
source of the product offered to them and also give an
impression that the mark being used by the defendants was
in some manner or the other associated with the registered
trademark of the plaintiff company and, therefore, amounts
to infringement within the meaning of Section 29(1) and
29(2) of the Trademarks Act, 1999. Use of the mark TATA
even in conjunction with the word A-ONE on the products of
the defendant is likely to give an impression to the customer
that the product has been manufactured or is being sold in
association with a company of TATA group and an unwary
customer is likely to purchase the product of the defendants
only on account of use of the mark TATA on it, in the belief
that the product was in some manner or the other
CS(OS)Nos.264/2008 & 232/2009
connected with the house of Tatas. An unwary consumer
while purchasing the goods of the defendants is likely to
attach considerable importance to use of the mark TATA on
the product and on account of connection of the trademark
TATA with the house of Tatas, he may believe that the
product was likely to be of superior quality and high
standard which he expects in respect of products being sold
by Tata group of companies. If it is later found that the
quality of goods purchased by him is not as good as the
quality of the goods being sold by house of Tatas, this may
immensely damage the goodwill and brand equity which
Tata group of companies enjoys in the market, besides
adversely affecting the interest of the citizens who may pay
for a product of high quality but may end up with getting a
product of inferior quality. Thus, not only infringement, but
also a case of passing off is clearly made out against the
defendant, despite the fact that company of Tata Group is
manufacturing and/or selling this product.
20. Since the trademark TATA is a well known
trademark, use of the aforesaid mark by the defendant on
the products being sold by him also constitutes
infringement within the meaning of Section 29(4) of the
CS(OS)Nos.264/2008 & 232/2009
Trademarks Act, 1999 since by using the trademark TATA,
he obviously has tried to take an unfair advantage by
encashing upon the brand quality and goodwill, which the
mark TATA enjoys in the market. Since the defendant has
not come forward to contest the suit, the presumption is
that use of the mark A-ONE TATA by him is not bona fide,
but is deliberate, intended to encash the popularity and
reputation, which TATA brand enjoys. Such use by the
defendant is likely to be detrimental to the reputation and
distinctive character of the registered trademark TATA of the
plaintiff company because if this mark is allowed to be used
on the products, which do not originate from TATA group of
companies, that may diminish the ability of the trademark
TATA to identify the source of the goods in respect of which
this trademark is used, besides lowering its reputation in
case the quality of the goods is not of expected standard.
21. In Suit No. 232/2009 Mr. Gaurav Barathi,
Advocate was appointed as Local Commissioner vide order
dated 4th February 2009. Mr. Barathi visited the premises
of the defendant at Chatterjee Plaza Auto Market, Asansol,
West Bengal on February 10, 2009 and met the defendant
Mr. Mohd. Jawed. According to the Local Commissioner,
CS(OS)Nos.264/2008 & 232/2009
the defendant told him the he was using the trade name
M/s TATA POINT until October 2008 and had since stopped
using that name on receiving the legal notice. The Local
Commissioner did not find the trademark/trade name TATA
POINT anywhere in the premises of the defendant. Even his
business card mentioned his trade name as „M/s New
Sangam Motors‟ though T in a circle (device) was found
printed in a card. The cash memo/bill book of defendant
was also found bearing device T in a circle. A perusal of the
invoice and business card confirms the report of the Local
Commissioner and shows that the stylized T in a circle
(device) was found printed on the invoice of Sangam Motor.
The invoice further shows that Sangam Motor deals in TATA
SUMO, INDICA, MARSHAL, BOLERO, SCORPIO,
Suspension and Engine Parts and Genuine and Spare Parts
for TELCO. The business card of Sangam Motor also bears
the same device.
22. Section 29 of Trade Marks Act, 1999, to the extent
it is relevant, provides that a registered trademark is
infringed when either that mark or a mark which is identical
or deceptively similar to that mark is used in the course of a
trade, in relation to goods or services. Section 2(2) of the
CS(OS)Nos.264/2008 & 232/2009
Act provides that in reference to the use of a mark „in
relation to goods‟ shall be construed as a reference to the
use of the mark upon or in any physical or in any other
relation whatsoever to such goods. When a trade mark is
used on an invoice issued for selling the goods, it does
indicate connection between the goods being sold under the
invoice and the trade mark which the invoice bears, and
therefore, amounts to use of the mark in relation to the
goods, which are sold under that invoice.
In Natural Chemicals Ld.v. Amblins (Chemists)
Ld., (1940) 57 RPC 323, the trademark Phyllosan was
found displayed on a few invoices of the defendant. Section
3 of Trademarks Acts (1905 to 1919) which governed the
case before the Court, defined the trademark to mean as a
mark used or proposed to be used upon or in connection
with goods for the purpose of indicating that they are the
goods of the proprietor of such trademark by virtue of
manufacture, selection, certification, dealing with or offering
for sale. It was held that though use of the word Phyllosan
on the invoices was not a use of the trademark „upon‟ the
goods in respect of which it was registered, it was clearly or
reasonably clearly a use in connection with the goods
CS(OS)Nos.264/2008 & 232/2009
because the defendant sending or giving the invoice to a
person, who had bought goods was stating that those were
the goods which he had bought and had stated that the
goods were phyllosan. The expression in connection with
the goods, which were found used in Section 3 of the
Trademarks Acts (1905 to 1919) having been used also in
Section 2(2) of the Trademarks Act, 1999. It is, therefore,
difficult to dispute that use of a trademark belonging to
another person on the invoices would constitute use of that
mark within the meaning of Section 2(2)(c)(i) of the
Trademarks Act, 1999. In fact, the expression used in
Section 2(2)(c)(i) being "in any other relation whatsoever to
the goods", the scope of use under trademarks Act, 1999 is
wider than that in the Act, which was applicable in the case
of Natural Chemicals (supra).
By using the T in a circle (device) which is a
registered trademark of the plaintiff in relation to number of
goods, on his invoice, the defendant represents to the
customer that he was commercially connected to the house
of Tatas on account of being their distributor/agent or
having been licensed by them to use the aforesaid trade
mark. The trade mark stylized T in a circle along with
CS(OS)Nos.264/2008 & 232/2009
stylized TATA device is registered in the name of the plaintiff
company vide registration No.838428 in Class 12 in respect
of vehicles, apparatus for locomotion by land, air or water,
vide registration No.1247047, in Class 37 in respect of
construction and repair of power stations, power generating
apparatus and of machinery, installation of electrical and
generating machinery, information services relating to repair
or to installations, providing on-line from a computer
database or the Internet, building construction, repair and
installation Services. Since the defendant is not a
distributor/agent of any company belonging to Tata Group
nor has he been permitted to use the aforesaid trade mark
owned by the plaintiff company, use of that mark by him on
his invoice would constitute infringement of the trademark.
23. As per fourth schedule of Trade Marks Act, 1999,
parts of an article or apparatus are, in general, classified
with the actual article or apparatus, except where such
parts constitute articles included in other classes. Since
there is no specific classification of auto parts, registration
of the aforesaid device in respect of vehicles would also
include registration in respect of parts of vehicle. Therefore,
this registered trade mark of the plaintiff covers auto parts
CS(OS)Nos.264/2008 & 232/2009
as well. Since the defendant is dealing in auto parts and
the registered trade mark of the plaintiff has been printed
on his invoice, his act amounts to infringement within the
meaning of sub-Section 1 of Section 29 of Trade Marks Act.
Since use of the aforesaid registered trade mark of the
plaintiff on the invoices of the defendant is likely to cause
confusion to the customers by making them believe that the
defendant was commercially connected with TATA company
being its distributors/agent/licensee, it also amounts to
infringement within the meaning of sub-Section 2 of Section
29 of Trade Mark Act. In any case, the TATA being a well
known mark, use of the aforesaid mark on the invoices of
the defendant whether in relation to auto parts or in
relation to some other goods would constitute infringement
within the meaning of sub-Section 4 of Section 29 of Trade
Mark Act.
24. For the reasons given in the preceding paragraphs,
Mr. Jawed Ahmed defendant in Suit No. 232/2009 is
restrained from using the mark stylized T in a circle (device)
or any other registered trade mark of the plaintiff company
or a mark identical or deceptively similar to any of the
registered trade mark of the plaintiff company either on his
CS(OS)Nos.264/2008 & 232/2009
invoice, business card or in any other manner. Since TATA
Point, which has been impleaded as defendant No.2 in the
suit is not a legal entity and is only a trade name adopted
by Mohd. Jawed, the name of TATA Point is struck off the
array of defendants. No other relief was pressed by the
learned counsel for the plaintiff during the course of
arguments.
25. Mr. Manoj Dodia defendant in Suit No.264/2008 is
restrained from using the registered trade mark TATA or
any other registered trade mark of plaintiff company or a
mark identical to or similar to any of the registered trade
mark of the plaintiff company either on the weighing
machines and spring balances or in relation to any other
product. He is also retrained from manufacturing and/or
selling, storing or marketing any product bearing any of the
registered trademarks of the plaintiff company or a mark
identical or similar to the aforesaid marks either on the
product or on their packaging/containers.
26. During the course of arguments, the learned
counsel for the plaintiff also pressed for award of punitive
damages the defendant in CS(OS) No.264/2008. It appears
from the documents filed by the plaintiff that defendant in
CS(OS)Nos.264/2008 & 232/2009
the case has been manufacturing and selling weighing
machines and spring balances bearing the trade mark TATA
of the plaintiff company.
27. The promotion and building of a Trade Mark,
particularly a mark which is used in relation to a variety of
good and/or services, requires considerable efforts, skill and
expenses. The brands are not built in a day, it takes years
to establish a brand in the market. Moreover, brand equity
can be earned only if the quality of the product sold and/or
services provided under that name are consistently found to
be of superior quality. No amount of marketing efforts and
promotional expenditure can build a brand, particularly in
the long run, if the quality of the product/service does not
commensurate with the marketing efforts. The brands,
particularly well known brands, themselves are now
becoming highly valuable and in fact are being sold as
standalone products. The companies which invest heavily
in brand building and back them up by quality products are
bound to suffer not only in reputation but also in financial
terms, on account of diminution in the value of the brand as
well as sale of their products/services, if the brands are not
given adequate protection by the Courts, by awarding
CS(OS)Nos.264/2008 & 232/2009
punitive damages against the infringers. Also, a soft or
benevolent approach while dealing with such persons, is
also likely to prejudicially affect the interests of the
consumer, who may pay the price which a premium product
commands in the market, but may get an inferior product
on account of such unscrupulous persons using trademarks
of others for their own commercial benefit, at the cost not
only of the trade mark owner, but also the consumer who
purchases their product.
Another purpose behind awarding punitive
damages is to deter those who may be waiting in the wings
and may be tempted to imitate the trade mark of others, in
case those who are sued before the Courts are not made to
pay such damages as would really pinch them. Awarding
token damages may, therefore, not serve the desired
purpose.
28. Our country is now almost in the league of
advanced countries. More and more foreign companies are
entering our markets, with latest products. They would be
discouraged to enter our country to introduce newer
products and make substantial investments here, if the
CS(OS)Nos.264/2008 & 232/2009
Courts do not grant adequate protection to their intellectual
property rights such as patents, trademarks and copyright.
Most of the products sold by these companies are branded
products, the marks on them having trans-border
reputation and enjoying tremendous brand equity. It is,
therefore, becoming increasingly necessary to curb such
trade mark piracies lest they drive away the huge foreign
investment our country is attracting. The Court should not
give premium to dishonesty and unfair practices by those
who have no compunctions in blatantly using the trademark
of others for making unearned profits.
29. In the facts and circumstances of the case, in
CS(OS) No.264/2008, punitive damages amounting to Rs.2
Lacs are awarded to the plaintiff company against defendant
Manoj Dodia. Since, Durga Scale Company is not a legal
entity and is only a trade name adopted by Manoj Dodia,
the name of Durga Scale Company is struck off the array of
defendants. Since it is Manoj Dodia, who was carrying
business under the name and style of Durga Scale Company
as its proprietor and there is no evidence indicating any
connection between Manish Dodia, who has been impleaded
as defendant No.2, and Durga Scale Company, the name of
CS(OS)Nos.264/2008 & 232/2009
defendant No.2 Manish Dodia is also struck off the array of
defendants.
Decree sheet be drawn accordingly.
(V.K. JAIN)
JUDGE
MARCH 28, 2011
'sn'/Ag/vkm
CS(OS)Nos.264/2008 & 232/2009
