Tata Sons Limited vs Shamim & Anr.
2012 Latest Caselaw 4821 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI


+                      CS(OS) 1428/2009


TATA SONS LIMITED                           ..... Plaintiff
                                Through:   Mr. Pravin Anand, Mr. Dhruv
                                           Anand and Mr. A. Sreekumar,
                                           Advocates

                       versus


SHAMIM & ANR.                              ..... Defendants
                                Through:   Defendants are ex parte.


%                               Date of Decision : August 17, 2012


CORAM:
HON'BLE MS. JUSTICE REVA KHETRAPAL

                                JUDGMENT

: REVA KHETRAPAL, J.

1. The plaintiff has filed the present suit for permanent injunction

restraining passing off, damages, rendition of accounts, delivery up,

etc.

2. The plaintiff, established 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 ` 251,543 Crores (US $ 62.5 billion) for the

financial year 2007-08. Since its inception in 1917, the plaintiff 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 the companies promoted by it. The use of the trademark

and trade 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 the

companies forming the TATA Group, colloquially also referred to as

the "House of TATA". 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.

3. The plaintiff asserts that in addition to the common law rights

that have accrued to the plaintiff with respect to the trademark and

trade name TATA, it is also the registered proprietor of several

TATA-formative trademarks in relation to various goods across

various classes. Thus, the plaintiff is the proprietor of several

trademarks comprising or containing the word TATA in Class 28, the

relevant class for the purpose of the present suit. The Original

Certificates for Use in Legal Proceedings for registered Trade Mark

Nos.551865, 585384, 838444, 839745, 839711 and 839779 in Class

28 are placed on record along with the list of well-known trademarks

issued by the Controller General of Patents, Designs and Trade Marks

acknowledging the plaintiff‟s trademark TATA and the "T within a

circle" device as well-known trademarks. A list of trademark

registrations owned by the plaintiff and its sister concerns for the

word mark TATA in India across all classes is also filed by the

plaintiff.

4. The defendant Nos.1 and 2 in the suit are stated to be engaged

in the business of manufacture, distribution, supply and sale of shuttle

cocks. The defendant No.2, M/s. Meerut Shuttle Cocks Industries, is

located at Suraj Kund Road, Meerut, Uttar Pradesh. The defendant

No.1 is the proprietor of the defendant No.2 concern. In or around

the month of April, 2008, the plaintiff received information that the

defendants were manufacturing and selling shuttle cocks under the

impugned name TATA. The plaintiff accordingly authorised an

investigation of the defendants through a professional investigation

agency. In April, 2008 itself, the plaintiff received the investigation

report which confirmed the involvement of the defendants in

infringing activities. The original report of the investigator dated 9 th

April, 2008 is filed in the present proceedings. Thereafter, a fresh

investigation of the defendants was also carried out. The

investigation report of the second investigator dated 19th May, 2009 is

also filed in the present proceedings. The investigation conducted by

the plaintiff revealed that the defendants have registered the

impugned trademark TATA vide application No.260676 in Class 28.

The said registration of the defendants, however, appears to have

become invalid due to non-renewal of the trademark registration. The

plaintiff claims that the adoption and use of the trademark TATA

deceptively similar to the plaintiff‟s well-known trademark TATA is

a blatantly dishonest and mala fide attempt by the defendants to

derive unfair advantage by creating an illusion that its products

emanate from the plaintiff or have some nexus or association with the

plaintiff. The plaintiff asserts that having regard to the fact that the

trademark TATA of the plaintiff is a well-known mark enjoying an

expansive reputation and goodwill, and that the TATA companies are

engaged in a wide spectrum of activities using the trademark TATA

and the said trademark has come to be exclusively recognized as a

source indicator of the goods and business of the plaintiff, the use of

an identical trademark by the defendants will create confusion and

deception in the minds of the purchasing public and members of the

trade, who will be misled into purchasing the defendants‟ products.

The defendants will thus be unjustly enriched at the consumers‟

expense and at the expense of the plaintiff. The damage that has

already been inflicted on the plaintiff‟s business‟ goodwill and

reputation is stated to be incalculable. However, for the purposes of

the present suit, the plaintiff estimates that such losses may be to the

tune of at least ` 20 Lacs till the date of the institution of the suit.

5. Despite service of summons on the defendants through

substituted service by publication, none appeared on behalf of the

defendants and the defendants were proceeded ex parte on November

24, 2010. Thereafter, the case was set down for ex parte evidence.

The plaintiff filed an affidavit by way of evidence of

Mr. V.Gurumoorthi PW-1. Mr. V. Gurumoorthi tendered in evidence

his affidavit by way of evidence as Ex.PW1/A and identified his

signatures at points "A" and "B" of the said affidavit. He also

tendered in evidence the documents Exhibits PW1/1 to PW1/20 and

the documents marked as Mark D to Mark P. Mr. V. Gurumoorthi

exhibited the certified true copy of the Power of Attorney in his

favour as Ex.PW1/1 and the Board Resolution in his favour from the

plaintiff as Ex.PW1/2. A certified true copy of the Certificate of

Incorporation of the plaintiff Company dated 08.11.1917 was

exhibited by him as Ex.PW1/3.

6. The Original Certificate for use in Legal Proceedings for

registered trademark No.551865 in Class 28 was exhibited as

Ex.PW1/13 and those pertaining to registered trademark Nos.585384,

838444, 839745, 839711 and 839779, also in Class 28, were

exhibited as Ex.PW1/14 (Colly.). Ex.PW1/15 is the printout from

the website of Trade Mark Office, wherein the plaintiff‟s trademark

TATA has been acknowledged and assigned the status of a well-

known trademark. Mark O is the list of trademark registrations in

various classes for the word mark TATA in India in favour of the

plaintiff.

7. Further, the following documents pertaining to the business

activities of the plaintiff Company in New Delhi were filed and

exhibited/brought on record along with the evidence by way of

affidavit of Mr. V.Gurumoorthi, the Constituted Attorney of the

plaintiff Company:-

(i) Ex.PW1/4 - Original receipt No.475100 issued by the

Municipal Corporation of Delhi in favour of the plaintiff

Company on payment of the property tax by the plaintiff

Company to the Corporation.

(ii) Ex.PW1/5 - Copy of Ledger Book maintained by Tata

Services Ltd. located in New Delhi illustrating the

financial transactions carried with the plaintiff Company

in New Delhi.

(iii) Mark D - Copies of the documents evidencing the

business activities of the plaintiff Company carried out

in New Delhi (filed along with the plaint).

(iv) Mark E - Copy of a Certificate of details of sharing of

expenses of the New Delhi office of Tata Services Ltd.

(filed along with the plaint).

(v) Mark F - A copy of the pass book entries indicating

existence of plaintiff‟s bank account in the State Bank of

India, Parliament Street, New Delhi (filed along with the

plaint).

8. The following documents pertaining to the well-known status,

reputation and goodwill enjoyed by the plaintiff‟s trademark TATA

were also exhibited/brought on record by PW1, Mr. V. Gurumoorthi:-

(a) Ex.PW1/6 - True copy of the write-up dated 24th May,

2009, titled "T for trust" appearing in the magazine, „The

Week‟ acknowledging the TATA Group as the world‟s

11th most reputed company.

(b) Mark G - Copy of the extract from The New

Encyclopaedia Britannica Volume 11 on the origin and

growth of the TATA Group.

(c) Mark H - Copy of 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.

(d) Mark I - Copy of pamphlet issued by the Trade Marks

Registry showing TATA as a well-known trademark.

(e) Mark J (colly.) - Articles appearing in various

newspapers/periodicals/magazines acknowledging the

immense goodwill and status enjoyed by the plaintiff‟s

„well-known‟ trademark TATA.

(f) Mark K - Copy of the 2009 Global Reputation Pulse,

The World‟s Most Reputable Companies : Global

Section (an online study of consumers in 32 countries),

ranking TATA eleventh in the Top 50 companies,

evidencing the immense goodwill and status enjoyed by

the plaintiff‟s „well-known‟ trademark TATA.

(g) Mark L - Copy of the latest brochure on the financial

highlights of the plaintiff Company and its sister

concerns.

      (h)    Mark M - Copies of the TATA Brand Equity and

             Business    Promotion   Agreement   dated     23.12.1999

entered into between the plaintiff Company and Tata

Teleservices Ltd. and Board Resolution and Letter

indicating the existence of other such agreements

between the plaintiff Company and other companies of

the TATA Group.

9. Copies of the orders passed by this Court, the High Court of

Sindh at Karachi and by WIPO Arbitration and Mediation Center

protecting the well-known trademark TATA of the plaintiff and

granting damages to the plaintiff were exhibited/marked by PW-1,

Mr. V. Gurumoorthi as Ex.PW1/7 to Ex.PW1/12 and Mark N.

10. The following documents illustrating and confirming the

defendants‟ illegal and infringing activities about which the plaintiff

came to know in the month of April, 2008 have also been proved on

record by PW-1, Mr. V. Gurumoorthi:-

(i) Ex.PW1/16 - Original report dated 9th April, 2008 of the

investigator deputed by the plaintiff along with Mark P,

which is the copy of handwritten bill issued by the

defendant No.1 to the said investigator for ` 540/- in

respect of the impugned products, bearing the name

TATA on the product purchased by the investigator.

(ii) Ex.PW1/17 - The original investigation report dated 19th

May, 2009 of the investigator deputed by the plaintiff

along with Ex.PW1/18, which is the original cash memo

dated 15th May, 2009 as received by the investigator

from the defendants against purchase of the infringing

product bearing the name TATA.

(iii) Ex.PW1/19 (Colly.) - Photographs of the infringing

products of the defendants filed along an affidavit under

Section 65B of the Evidence Act, 1872 as well as a

supplementary affidavit under Section 65B of the

Evidence Act exhibited as Ex.PW1/20.

11. Having heard the learned counsel for the plaintiff, perused the

evidence of PW-1, Mr. V. Gurumoorthi and the documents exhibited

by him, I am satisfied that the trademark TATA of the plaintiff is a

well-known mark and immense goodwill and reputation is enjoyed by

the plaintiff in respect thereof. The plaintiff has established that

TATA companies are engaged in a wide spectrum of activities using

the trademark TATA and the said trademark has come to be

associated with the plaintiff and recognized as a source indicator of

the goods and business of the plaintiff. The use of an identical trade

name by the defendants is bound to create confusion and deception in

the minds of the consumers and members of the trade, and thereby

adversely affect the plaintiff‟s goodwill and reputation. The plaintiff

Company would suffer irreparable loss, damage and injury to its

business‟ goodwill and reputation, if the defendants are not

permanently restrained from carrying on their infringing activities and

from blatantly and illegally capitalizing on the world famous

trademark/name of the plaintiff for the purpose of their own illegal

profit and gain.

12. The suit of the plaintiff is accordingly decreed by passing a

decree of permanent injunction restraining the defendants, their

partners, proprietors, or as the case may be, their officers, servants

and agents from selling, offering for sale, advertising, and directly or

indirectly, dealing in shuttle cocks or goods of any description

bearing the trademark TATA and/or any mark/s deceptively similar to

the plaintiff‟s trademark TATA, amounting to passing off of the

defendants‟ goods as those of the plaintiff‟s. The defendants are

further directed to destroy the goods bearing the impugned mark,

dyes, blocks, cartons, labels and any other infringing material within

ten weeks from today.

13. During the course of arguments, the learned counsel for the

plaintiff also pressed for the award of punitive damages against the

defendants. Having regard to the loss of business reputation and

goodwill of the plaintiff in the market and in view of the fact that the

evidence of the plaintiff is unrebutted, I am of the opinion that

punitive damages amounting to ` 2 lacs on account of loss of

reputation and goodwill of the plaintiff in the market would be

justified. The defendants are accordingly directed to pay damages in

the sum of ` 2 lacs to the plaintiff within ten weeks of the passing of

this order.

CS(OS) 1428/2009 and IA No.9968/2009 stand disposed of in

the above terms.

REVA KHETRAPAL (JUDGE) August 17, 2012 km