Infosys Technologies Ltd. vs Adinath Infosys Pvt. Ltd & Ors.
2011 Latest Caselaw 5475 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                      Judgment Pronounced on: 15.11.2011

+ CS(OS) 244/2008

INFOSYS TECHNOLOGIES LTD.            ..... Plaintiff
               Through: Mr Prashant Gupta, Adv.

                                versus


ADINATH INFOSYS PVT. LTD & ORS.                 ..... Defendants

                          Through: 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. (ORAL)

1. The plaintiff-company, which was initially

incorporated in the name and style of Infosys Consultants

Private Limited and which changed its name to Infosys

Technologies Private Limited on 2nd June, 1992, is engaged

in the business of providing IT services, solutions,

consulting and business process management. The

business of the plaintiff-company includes designing

enterprise architecture, enterprise data and information

security, software product development, customized

software development, application maintenance,

infrastructure maintenance, application testing, package

application implementation roll-out and maintenance,

business process modeling, business process outsourcing,

business consulting and operations consulting, engineering

design for products/hardware, or any combination thereof.

These services and solutions are being offered by the

plaintiff-company across various industry segments like

banking, capital markets, insurance, healthcare, life

sciences, retail, high-technology, discrete manufacturing,

communication service providers, automobiles, aerospace,

resources, energy and utilities. The plaintiff-company has

its presence in various countries and has offices in Atlanta,

Bellevue, Bidgewater, Charlotte, Detroit, Fremont, Houston,

Lake Forest, Lisle, New York, Phoenix, Piano, Quincy,

Reston, and Toronto in North America; Brussels,

Copenhagen, Frankfurt, Geneva, Helsinki, London, Milan,

Oslo, Paris, Stockholm, Stuttgart, Utrecht and Zurich in

Europe; Beijing, Hong Kong, Mauritius, Melbourne,

Shanghai, Sharjah, Sydney and Tokyo in Asia Pacific; and

Bangalore, Bhubaneswar, Chandigarh, Chennai,

Hyderabad, Mangalore, Mumbai, Mysore, New Delhi, Pune

and Thiruvananthapuram in India.

2. INFOSYS is the registered trademark/service mark

of the plaintiff-company in various Classes including Class

16 in respect of computer software. This is the case of the

plaintiff-company that on account of continuous, extensive

and substantial use of the mark INFOSYS by it over two

decades combined with the excellent services offered by it

under the aforesaid name this mark has become distinctive

of the plaintiff-company in the eyes of the customers not

only in India but in other countries as well. This is also the

case of the plaintiff-company that use of the mark INFOSYS

implies that the goods/services being offered under this

mark are originating from the plaintiff-company and the

user of this mark is in some manner or the other associated

with the plaintiff-company. It is claimed that the software

development by the plaintiff-company are of excellent

quality and acclaimed throughout the world for their

utilitarian value. The plaintiff-company claims to have

received a number of awards as detailed in para 14 of the

plaint and had revenue of Rs.9028 crore in the year 2005-

06 and Rs.3655 crore in one quarter of the year 2006-07.

3. The defendant company is engaged in the business

of website development and is offering web design &

management and providing computer training courses

affiliated to Aptech Computer Education. It is alleged that

the business of the defendants relates to computer related

products/services and is directly relatable to plaintiff‟s

business. The defendant has been using the expression

INFOSYS as a part of its corporate name. The website of the

defendant company also uses the expression INFOSYS as a

part of the domain name of the defendant No.1 company.

The plaintiff sent a cease and desist notice to the defendants

on 3rd January, 2005. The defendants, however, continued

to use the expression INFOSYS as a part of their

corporate/trade name. The plaintiff has sought an

injunction restraining the defendants from using the

mark/expression INFOSYS as a part of their

corporate/trade name. They have also sought an injunction

restraining the defendants from passing off their goods and

services as those of the plaintiff-company by using the name

of INFOSYS. The plaintiff has sought delivery up of the

material containing the name INFOSYS and damages

amounting to Rs.20 lac.

4. The defendants were proceeded ex parte vide order

dated 17th September, 2008 since they did not put an

appearance despite service on them. An interim order was

passed on that day restraining the defendants from using

the mark INFOSYS as their corporate name and from

marketing any product or service under the aforesaid mark

or any other mark deceptively or confusingly similar to the

mark INFOSYS during pendency of the suit. The

defendants were also restrained from using the aforesaid

mark as their domain name.

5. The plaintiff has filed an affidavit of Mr Utham

Chengappa, its Principal Legal Counsel, who also happens

to be the constituted attorney of the plaintiff-company. In

his affidavit by way of evidence, Mr Chengappa has affirmed

on oath the case set out in the plaint.

6. Ex.PW-1/3 is the certificate, whereby the mark

Infosys was registered in favour of the plaintiff-company in

class 16 in respect of computer software, computer

stationery and computer manuals, etc. The plaintiff-

company also holds the following trademark registrations in

its favour:

Trade Registration Class Description of Goods.

Mark No. date
475269   15.07.1987          16      Computer        stationery,
                                     computer          manuals,
                                     printed      matter     for
                                     computer      instructions
                                     and teaching materials.
475267          15.07.1987   9       Computer         hardware,
                                     computer        interfaces,
                                     peripherals,     electronic
                                     telex interfaces.
484837          27.01.1988   7       Machines, machine tools
                                     and motors (not for land
                                     vehicles)

873683          30.08.1999   34      Tobacco,         smoker‟s
                                     articles, matches and all
                                     goods in class 34
873669          30.08.1999   20      Furniture      and     all
                                     materials of plastic
873672          30.08.1999   23      Yarns and threads for
                                     textile use
873673          30.08.1999   24      Textile goods and all
                                     goods included in class

873682          31.01.1996   33      Alcoholic beverages, all
                                     being goods in class 33
873666          30.08.1999   17      Rubber, flexible pipes,
                                     insulating materials
873668          30.08.1999   19      Building materials, non-
                                     metallic,   transportable
                                     buildings.
873664          30.08.1999   14      Precious metals, alloys
                                     and jewellery
873665          30.08.1999   15      Musicals instruments all
                                     being goods included in
                                     class 06
873658          30.08.1999   6       Common metals and



                                    alloys, metal building
                                   material, and all goods
                                   included in class 06

873662          30.08.1999   12    Vehicles, apparatus for
                                   locomotion by land, air
                                   or water, all being goods
                                   included in class 12
637315          18.08.1994   9     Computer        hardware,
                                   data modules, motion
                                   control           devices,
                                   warehouse management
                                   system,         Customer
                                   service      management
                                   systems as used in
                                   banks, automatic teller
                                   machines, computerised
                                   interactive machines all
                                   being goods in class 09
637314          18.08.1994   16    Computer         software,
                                   stationery,      manuals,
                                   printed            matter,
                                   brochure, instructional
                                   and teaching material.

7. The case of the plaintiff-company is that the

business in which defendant No. 1-company is engaged

being computer software, use of the name INFOSYS by

defendant No. 1-company directly as its corporate name

and/or domain name infringes its registered trademark

since, defendant No. 1-company is engaged in the same

business, for which plaintiff-company also is using the

mark INFOSYS.

8. The defendants have not come forward to explain

why they chose to use the expression INFOSYS as a part of

the corporate name of defendant No.1-company.

Considering the widespread reputation and goodwill which

the trademark INFOSYS enjoys not only in India but also in

various other countries, in the field of IT services. The

defendants seem to be providing IT related services under

the name Adinath Infosys Pvt. Ltd., use if the expression

„INFOSYS‟ by the defendant-company, even in conjunction

with the word Adinath would constitute infringement within

the meaning of Section 29(1) of the Trademarks Act since

the consumer would identify the products/services of the

defendant with the mark INFOSYS even where this mark is

used in conjunction with some other word such as Adinath,

when the defendants No. 1-company is engaged in the same

business in which the plaintiff company is engaged and is

providing services similar to those which the plaintiff-

company is providing under its registered trademark

INFOSYS.

Since the trademark INFOSYS on account of its

continuous user by the plaintiff-company for the last many

years and on account of considerable efforts made and

expenditure incurred by the plaintiff-company in building

and promoting this brand name, coupled with the excellent

quality of the products and services which the plaintiff-

company offers under this brand name has become

distinctive to the plaintiff company, a person who is offered

IT related services under a brand name which includes the

expression INFOSYS as its key component is likely to

presume that either the defendant-company is in some

manner or the other associated with the plaintiff-company

or has been licensed by it to provide such services and that

is why the expression INFOSYS is being used as a key

component of the corporate name/brand name of the

defendant-company. This impression is likely to cause

confusion in the mind of the customer as regards the source

of the services being offered to him. Hence, use of the

expression INFOSYS by the defendant-company while

offering IT related services also constitute infringement

within the meaning of Section 29(2) of the Trademarks Act.

10. Section 29(5) of the Trade Marks Act provided that

a registered trade mark is infringed by a person if he uses

such registered trade mark, as his trade name or part of his

trade name, or name of his business concern or part of the

name of his business concern dealing in goods or services in

respect o which the trade mark is registered. Therefore, by

using the word INFOSYS which is the registered trade mark

of the plaintiff as the key feature of its corporate name,

defendant No. 1 has clearly infringed the registered trade

mark of the plaintiff.

11. In Montari Overseas Ltd. vs. Montari Industries

Ltd. 1996 PTC (16), the plaintiff Montari Industries Ltd. was

incorporated on January 17, 1980. The

defendant/appellant Montari Overseas Ltd. was

incorporated later on April 21, 1993. On coming to know of

the existence of the appellant/defendant, the

plaintiff/respondent filed a suit seeking injunction against

the use of the name „Montari‟ in the corporate name of the

defendant. It was contended on behalf of the

appellant/defendant that there was no evidence to show

that any confusion had been created in the mind of the

customers or members of the public by the use of the word

Montari in the corporate name of the appellant/defendant

nor was there any evidence to show that the business of the

plaintiff/respondent had been diverted by the appellant.

Rejecting the contention of the appellant/defendant a

Division Bench of this Court, inter alia, observed as under:-

"It is well settled that an individual can trade under his own name as he is doing no more than making a truthful statement of the fact which he has a legitimate interest in making. But while adopting his name as the trade name for his business he is required to act honestly and bonafidely and not with a view to cash upon the goodwill & reputation of another. An individual has the latitude of trading under his own name is in recognition of the fact that he does not have choice of name which is given to him. However in the case of a Corporation the position is different. Unlike an individual who has no say in the matter of his name, a company can give itself a name. Normally a company cannot adopt a name which is being used by another previously established company, as such a name would be undesirable in view of the confusion which it may cause or is likely to cause in the minds of the public. Use of name by a company can be prohibited if it has adopted the name of another company. It is well settled that no company is entitled to carry on business in a manner so as to generate a belief that it is connected with the business of another company, firm or an individual. The same principle of law which applies to an action for passing off of a trade mark will apply more strongly to the passing off of a trade or corporate name of one for the other. Likelihood of deception of an unwary and ordinary person in the street is the real test and the matter must be considered from the point of view of that person. Copying of a trade name amounts to making a false representation to the public from which they have to be protected.

Besides the name of the company acquires reputation and goodwill, and the company has a right too to protect the same. A competitor cannot usurp the goodwill and reputation of another. One of the pernicious effects of adopting the corporate name of another is that it can injure the reputation and business of that person."

In Mahendra & Mahendra Paper Mills Ltd. vs.

Mahindra & Mahindra Ltd. 2002(24) PTC 121 (SC), the

respondents before the Supreme Court was a company

incorporated under the name „Mahindra & Mahindra Ltd.‟

The appellant/defendant was incorporated under the name

„Mahendra & Mahendra Paper Mills Ltd‟. A suit was filed

by the plaintiff/respondent „Mahindra & Mahindra Ltd.‟

against the appellant/defendant „Mahendra & Mahendra

Papers Ltd.‟ seeking injunction against the use of the words

„Mahindra & Mahindra‟ and words deceptively similar to

„Mahindra & Mahindra‟. „Mahindra‟ was the registered trade

mark of the plaintiff in respect of the goods in Class 12 of

the Trade & Merchandise Marks Act, 1958. The case of the

plaintiff was that the words Mahendra & Mahendra were

phonetically, visually and structurally almost identical or

deceptively similar to its corporate name and use of this

name was intended to deceive the member of the public into

believing that the defendant was an officiate of the plaintiff

or was in some way connected with it. The contention of the

appellant/defendant was that it was not an action for

infringement of trade mark but was an action for passing off

and in the absence of any similarity of the goods

manufactured or; sold by the parties, test of deception or

confusion amongst the consumers did not arise. Noticing

that the name „Mahindra & Mahindra‟ had acquired a

distinctiveness and a secondary meaning in the business

and trade circles and people had come to associate the

name „Mahindra‟ with a certain standard of goods and

services, the Supreme Court was of the view that any

attempt by another person to use the name in business and

trade circles is likely to and in probability will create an

impression of a connection with the plaintiffs‟ group of

companies. During the course of the judgment, the

Supreme Court, inter alia, observed as under:

"Without intending to be exhaustive some of the principles which are accepted as well settled may be stated thus; that whether there is a likelihood of deception or confusion arising is a matter for decision by the Court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are

likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade, and others."

12. A person is well within his right to sell his goods or

render services using any trade name for the purpose. With

the passage of time the goods sold or the services rendered

by him, as the case may be, may acquire certain reputation

or goodwill in the market which becomes the property of

that person and needs to be protected by the court. It is not

permissible for any other person to start selling goods or

rendering services either using the same name or imitating

that name so as to cause injury to that person and enrich

himself at the cost of the person who had already been

using that name and had acquired a certain reputation with

the passage of time and on account of the quality of the

goods sold or services rendered by him. Any attempt on the

part of a person to enrich upon the goodwill generated by

any other person needs to be curbed by the court whenever

approached by the aggrieved party in this regard.

13. During pendency of the suit, defendant No. 1-

company has changed its name from ADITECH INFOSYS

PRIVATE LIMITED to ADITECH INFOTECH PRIVATE

LIMITED, as is evident from the Certificate of Incorporation,

issued to defendant No.1-company on 25th May, 2008. This

certificate also shows that the previous name of defendant

No.-1-company was ADITECH INFOSYS PRIVATE LIMITED

which was later changed to ADITECH INFOTECH PRIVATE

LIMITED. The name of defendant No.1-company having

been changed only on 12th January, 2008, it is obvious that

the plaintiff-company had a cause of action when it filed the

present suit on 22nd January, 2008.

14. For the reasons given in the preceding paragraphs,

defendant No. 1 is restrained from using the expression

„INFOSYS‟ or any other expression which is identical or

deceptively similar to the trademark „INFOSYS‟ as a part of

its corporate name or for providing any of the services in

which the plaintiff-company is engaged. In the facts and

circumstances of the case, I see no justification to award

any damages to the plaintiff-company. No other relief needs

to be granted to the plaintiff-company. Since the trademark

of the plaintiff company has been infringed by defendant

No.1, which is a corporate entity, no injunction needs to be

issued against the other defendants, who are the Directors

of defendant No.-1 company. There shall be no order as to

costs.

Decree sheet be drawn accordingly.

(V.K. JAIN) JUDGE NOVEMBER 15, 2011 vn/bg