Delhi High Court
The Coca Cola Company And Anr. vs Rajesh on 8 May, 2013
Author: Manmohan
F-30
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 2080/2011 & I.A. 13582/2011
THE COCA COLA COMPANY AND ANR. ..... Plaintiffs
Through: Ms. Nancy Roy, Advocate.
versus
RAJESH ..... Defendant
Through: None.
% Date of Decision: 08th May, 2013
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J (Oral):
1. Present suit has been filed for injunction and damages for
infringement of trade mark, passing off and unfair competition.
2. The prayer clause in the plaint is reproduced hereinbelow:-
"A. The Defendant be restrained by a permanent injunction
from using the trade marks COKE and/or COKE STUDIO of
the Plaintiff No.1 as a domain name or part of the domain
name, as a trade mark or part of a trade mark, a trade name or
corporate name or as part of a trade or corporate name, as a
metatag or otherwise on the internet or the world wide web, or
in any other manner whatsoever so as to infringe the registered
trade marks of the Plaintiff No.1 or pass off their business as
and for the business of the Plaintiffs.
B. The Defendant be ordered by a decree of mandatory
injunction to transfer the domain name "cokestudio.in" to the
Plaintiff No.1 and a direction be issued to the National Internet
Exchange of India c/o ISPAI (Internet Service Provider
Association of India) 612-A, Chiranjiv Tower, 43, Nehru Place,
New Delhi-110019 as also to the Registrar of the domain name
M/s A to Z Domains Solutions Pvt. Ltd. to transfer the said
domain name to the Plaintiff No.1.
C. The Defendant be called upon to allow inspection of its
accounts to assist in ascertaining profits made by the Defendant
by its unauthorized use of the domain name "cokestudio.in"
and a decree be accordingly passed in favour of the Plaintiff
No.1 for the amount found due.
D. Plaintiffs further pray that costs of the suit be awarded to
the Plaintiffs; and
E. Any other relief which the Hon'ble Court thinks fit and
proper in the circumstances of the case is allowed in favour of
the Plaintiffs and against the Defendant."
3. However, at the outset, learned counsel for plaintiffs states that she
does not wish to press prayer „C‟. The said statement is accepted by this
Court and plaintiffs are held bound by the same.
4. The relevant facts of the present case are that plaintiff No.1 is the
registered proprietor of the well-known trade marks COKE and COKE
STUDIO.
5. In 2008, plaintiff No.1 launched a Television Series in Pakistan called
„COKE STUDIO‟ featuring live musical performances. The program
focuses on a fusion of the diverse musical influences in Pakistan including
eastern classical, folk and contemporary popular music.
6. In the plaint, it is stated that the series COKE STUDIO is extremely
popular in India as well and the plaintiff No.1 in order to promote its
aforesaid series, regularly uploads video and MP3 files of each song.
7. It is the plaintiff‟s case that in and around April, 2011, while
preparing for the launch of COKE STUDIO in India, plaintiffs found that
the defendant had registered the domain name www.cokestudio.in.
However, upon typing the domain name "cokestudio.in", no webpage was
found.
8. Upon further investigation, the plaintiffs found that the said domain
name had been registered by the defendant since 05th June, 2010. However,
the defendant had failed to launch any website even though substantial
period of time had expired since its registration. It is the plaintiffs case that
defendant had only registered the website for the purposes of squatting on it.
9. On 26th August, 2011, plaintiffs filed the present suit against the
defendant. On 29th August, 2011, this Court passed an ex parte ad interim
injunction order against the defendant.
10. Since the defendant failed to enter appearance, this Court set down the
defendant ex parte vide order dated 11th January, 2012.
11. The plaintiffs filed their ex parte evidence by way of affidavits and
exhibited amongst others the registration certificate of the trade marks
COKE, COKE STUDIO as well as the comments of music fans on
Facebook, website and also proved the printouts of plaintiffs and
defendant‟s website.
12. Having heard learned counsel for the plaintiffs and having perused the
ex parte evidence as well as documents placed on record, this Court is of the
opinion that plaintiffs have proved the facts stated in the plaint and have also
exhibited the relevant documents in support of their case. Since the
plaintiffs‟evidence has gone unrebutted, said evidence is accepted as true
and correct.
13. This Court is further of the opinion that defendant‟s act of adopting
and registering of domain name www.cokestudio.in infringes the plaintiff
No.1‟s registered trade marks COKE and COKE STUDIO.
14. In fact, in Kaviraj Pandit Durga Dutt Vs. Navaratna
Pharmaceutical, AIR 1965 SC 980 the Apex Court has held, "The action
for infringement is a statutory remedy conferred on the registered proprietor
of a registered trade mark for the vindication of the exclusive right to the
use of the trade mark in relation to those goods........ In an action for
infringement, the plaintiff must, no doubt, make out that use of the
defendant's mark is likely to deceive, but were the similarly between the
plaintiff's and the defendant's mark is so close either visually, phonetically
or otherwise and the court reaches the conclusion that there is an imitation,
no further evidence is required to establish that the plaintiff's rights are
violated."
15. Further, this Court in Info Edge (India) Pvt. Ltd. & Anr. vs. Shailesh
Gupta & Anr., 98 (2002) DLT 499 has held "Both the domain names
"Naukri.com" of the plaintiff and "Naukari.com" of the defendant,
depicting the nature and type of business activity they carry on are identical
or confusingly similar trade mark or service marks. It is also a possibility
for an internet user while searching for the website of the plaintiff to enter
into the website of the defendant through only a small mis-spelling of the
domain name and, in fact, such incident has occurred in the case of the
plaintiff itself vis-a-vis the defendant in proof of which a document is also
placed on record. Such diversion of traffic with the sole intention of ulterior
gain in the similar business activity by a competitor, requires protection. A
Court discharging equitable justice should come in aid and for protection of
the honest user as opposed to a dishonest user acting on bad faith."
16. This Court is also of the opinion that defendant‟s adoption and
registration of the domain name www.cokestudio.in being identical to
plaintiff No.1‟s registered trade marks COKE and COKE STUDIO is
dishonest. In M/s. Satyam Infoway Ltd. vs. M/s. Sifynet Solutions Pvt.
Ltd., AIR 2004 SC 3540, the Supreme Court has held as under:-
"16. The use of the same or similar domain name may lead to a
diversion of users which could result from such users
mistakenly accessing one domain name instead of another. This
may occur in e-commerce with its rapid progress and instant
(and theoretically limitless) accessibility to users and potential
customers and particularly so in areas of specific overlap.
Ordinary consumers/users seeking to locate the functions
available under one domain name may be confused if they
accidentally arrived at a different but similar web site which
offers no such services. Such users could well conclude that the
first domain name owner had misrepresented its goods or
services through its promotional activities and the first domain
owner would thereby lose their custom. It is apparent therefore
that a domain name may have all the characteristics of a
trademark and could found an action for passing off.......
xxxx xxxx xxxx
31. ............. The appellant is the prior user and has the
right to debar the respondent from eating into the goodwill it
may have built up in connection with the name........."
17. Consequently, the present suit and application are decreed in terms of
prayers „A‟ and „B‟ of the plaint along with costs. A direction is also issued
to the National Internet Exchange of India c/o ISPAI (Internet Service
Providers Association of India) 612-A, Chiranjiv Tower, 43, Nehru Place,
New Delhi-110019 as also to the Registrar of domain name M/s A to Z
Domains Solutions Pvt. Ltd. to transfer the domain name cokestudio.in to
plaintiff No.1.
18. Registry is directed to prepare a decree sheet accordingly.
MANMOHAN, J
MAY 08, 2013
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