Delhi High Court
Intel Corporation vs Gautam Gupta & Anr on 13 October, 2014
$~ 55
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision : 13th October, 2014
+ CS(OS) 1774/2011
INTEL CORPORATION ..... Plaintiff
Through: Mr.Manoj Kumar Singh and Mr Manav
Kumar, Advs,
versus
GAUTAM GUPTA & ANR ..... Defendants
Through:
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (ORAL)
1. Plaintiff has filed the present suit for restraining infringement of
trademark, passing off, delivery up and damages.
2. Summons in the suit and notice in the application filed under order
XXXIX Rule 1 & 2 CPC were issued on 29.07.2011. Counsel for the
defendants entered appearance on 08.11.2011 and sought time to file the
written statement. Vide order dated 01.03.2012, application filed under
order XXXIX Rule 1 & 2 was disposed of whereby defendants, their
directors, partners, officers, servants and agents were restrained from
advertising, directly or indirectly running any company under the name
„Intel Land Developers Private Limited and/or any other mark
deceptively similar to the plaintiff‟s trademark INTEL as part of its name
for running any trade and business.
3. On 13.04.2012, right of the defendants to file the written statement was
closed. None appeared for the defendants on 06.07.2012 and 12.09.2012,
consequently defendants were proceeded ex parte vide order dated
12.09.2012.
4. Plaintiff has filed affidavit by way of evidence of Mr. Rahul Sethi,
(PW1), Constituted Attorney of the Plaintiff. Copy of Power of attorney
in favour of PW1 has been exhibited as Ex.PW1/1. PW1 has deposed that
the plaintiff company is known as the world‟s largest semiconductor chip
maker and plaintiff through its subsidiaries is engaged worldwide in the
business of developing advanced integrated digital technology platform
for the computing and communication industries and that plaintiff‟s
product include, microprocessors (the central processing units which acts
as the "brains" of a computer); chipsets; motherboards; flash memory;
wired and wireless connectivity products; communicators infrastructure
component, including network processors; application and cellular based
processors; and product for networked storage; that are sold under the
name and mark inter alia containing the word INTEL, which is a coined
word having a very high degree of inherent distinctiveness.
5. PW1 has also deposed that the plaintiff has been instrumental in bringing
about the personal computer revolution around the world and has
successfully, continuously, and dramatically improved the computing
experience for Personal Computers (PC) users by providing more
powerful microprocessors. Further, a wide range of products developed
by the plaintiff have gained worldwide acceptance under the name and
mark INTEL which is a world famous and globally respected trade mark,
trade name, service mark, and brand name and signifies quality,
reliability, and technologically superior products.
6. PW1 has further deposed that the plaintiff currently employs an estimated
82,000 people in its various subsidiary companies throughout the world
and its global annual turnover for the year 2010 was in excess of US $ 43
billion. Also the plaintiff has business operations in excess of 48
countries around the world covering the Americas, Japan, Europe, Africa,
and Asia-Pacific, including India and the plaintiff‟s products and
services, under the mark INTEL are sold in more than 100 countries
including India through a wide network of subsidiaries, associates,
distributors, stockiest, resellers, assemblers, and original equipment
manufacturers (OEMs) etc.
7. PW1 has also deposed that the plaintiff has used the mark/name INTEL
as its corporate name and on its products since 1968, the year it was
incorporated and the use of the name and mark INTEL was first
commenced in the United States of America and subsequently extended
to other countries of the world. Further since its inception in 1968, the
plaintiff has grown to be a truly global corporation and used the name and
mark INTEL to market its products and services, and to conduct its
business activities.
8. Rahul Sethi, PW1 has also deposed that the plaintiff though formally
established its operations in India in 1988 with the opening of its branch
office in Bangalore, it has been exporting products to India since 1972.
Copies of the documents evidencing sale of the plaintiff‟s products in the
year 1971-72 to the Minstry of Defence, India and other institutions have
been exhibited as Ex.PW1/2. PW1 has further deposed that plaintiff‟s
INTEL branded products are marketed and promoted by its branch office
and wholly owned subsidiary in India, trading as Intel Asia Electronics
Inc. and Intel Technology India Private Ltd., respectively with branch
offices in Ahmadabad, Bangalore, Chandigarh, Chennai, Delhi,
Hyderabad, Kochi, Kolkata, Mumbai, Pune and a network of dealers and
distributors throughout India and the plaintiff‟s subsidiary company and
branch offices have spent millions of rupees to popularize its INTEL
branded products in India. Copies of print advertisements and news
articles from newspapers and magazines are filed along with the plaint.
PW1 has next deposed that the INTEL mark has become a household
name in India, even more so because of the large volume of computer
software being developed and exported by Indian Companies.
9. PW1 has also deposed that plaintiff uses its INTEL mark on products
beyond computers and the plaintiff‟s microprocessors and other INTEL
branded products are being increasingly used in many consumer
electronic products, including set-top boxes, MP3 players, media centers,
digital cameras, high-definition television (HDTV) sets, digital audio and
video devices, and household appliances such as microwave ovens and in
light of the plaintiff's 43 year history and the popularity of its broad range
of products and services that are sold extensively worldwide under the
INTEL trade mark, the mark/name INTEL has become one of the most
valuable brands in the world and has been ranked among the top 10
brands by leading independent publications since as early as 1993, which
speaks volumes for the goodwill and recognition enjoyed by the
plaintiff‟s trade mark INTEL. Copies of the advertisement and newspaper
clippings of magazines have been exhibited as Ex. PW1/3.
10. PW1 has next deposed that the plaintiff has invested and continues to
invest substantial amounts of money and effort in advertising and
promoting the INTEL mark and a multitude of computer peripherals and
services under the INTEL mark. PW1 has also deposed that by virtue of
prior adoption, prior use, and registration, as well as extensive publicity
and promotion, the trade mark INTEL has earned significant goodwill
and reputation among members of the trade and public who associate the
mark/name INTEL with the plaintiff and no one else and the INTEL mark
serves as the exclusive designation of origin of plaintiff‟s products and
services. Plaintiff‟s approximate annual revenue and approximate annual
global advertising expenditure, including reimbursements for cooperative
advertising and expenditure towards R&D (research and Development)
for the period 1998-2008 are as follow:
Year Revenue R&D Worldwide
Expenditure Advertising
(in at least &
$US (in at least Promotional
Million) $US Million) Expenditure
(in at least
$US Million)
1998 $26,200 $2,500 $1,300
1999 $29,300 $3,100 $1,700
2000 $33,700 $3,800 $2,000
2001 $26,500 $3,700 $1,600
2002 $26,700 $4,000 $1,700
2003 $30,000 $4,300 $1,800
2004 $34,200 $4,700 $2,100
2005 $38,800 $5,100 $2,600
2006 $35,300 $5,800 $2,300
2007 $38,300 $5,700 $1,900
2008 $37,500 $5,700 $1,800
2009 $35,100 $5600 $1,390
2010 $43,623 $6,576 $1,800
11. PW1 has also deposed that the consistent superior quality and the
plaintiff‟s efforts to continuously design, redesign, develop, and upgrade
its products with the changing requirements of industry and the public
have contributed in building enduring public trust and demand for its
INTEL branded products and services. Thus, the reputation and goodwill
in the INTEL trade mark is well earned and a result of continuous effort
and huge monetary investment.
12.Rahul Sethi, PW1, has also deposed that the plaintiff has an estimated
2000 trade mark registrations world-wide consisting of or incorporating
the word INTEL, in respect of computers, computing devices,
microprocessors and various parts thereof as well as in respect of
software to be used with computers and other computer related products
and services. A list of the countries in which the plaintiff‟s trade mark
containing the word INTEL is registered and/or pending for registration
has been exhibited as Ex.PW1/4.
13.PW1 has also deposed that the plaintiff has obtained registrations for the
INTEL trade mark in respect of goods covering Classes, 9, 16, 38, 42 02,
03, 04, 05,06,07,08,10,11,12,13,14,15,17,18,19,21,22,23,24, 25, 26, 27,
28, 30,31, 32, 33, 34, 36, 37, 39, 40, 41 and for the mark INTEL MMX in
Class 9 and INTEL INSIDE in Class 14. The legal proceedings
certificates bearing nos. 1240068 in class 99, 803796 in class 16 and
678000 in class 9 have been exhibited as Ex.PW1/5, Ex.PW1/6 and
Ex.PW1/7 respectively. PW1 has further deposed that the registrations
are valid and subsisting on the Register and are in full legal force thus
conferring on the plaintiff the right to its exclusive use and the right to
stop use of any identical or deceptively similar mark by unauthorized
persons. Further as per the Trade Mark Registry, India the plaintiff‟s
mark INTEL comes under the category of Well Known Trademarks. The
list of the registered trademarks under the category of Well Known Marks
of the Trade Mark Registry wherein the plaintiff‟s mark INTEL is also
mentioned has been exhibited as Ex.PW1/8.
14.PW1 has next deposed that defendants are engaged in the business of
acquiring, dealing and developing properties and are trading under the
name Intel Land Developers Private Limited and Mrs. Madhu Sushil
Gupta and Mr. Gautam Gupta are the Directors of the Defendant
Company.
15.PW1 has also deposed that around first week of July, 2007, the plaintiff
during the course of search into Registrar of Companies (ROC) record
came across the defendant‟s company, „Intel Land Developers private
Limited‟ and the enquiries conducted by the plaintiff revealed that the
defendants were not conducting any active business, the company exists
on paper and was incorporated to effect land purchase transactions and is
a loss making company. Copy of the certificate of incorporation of the
defendant company has been exhibited as Ex.PW1/9.
16.PW1 has further deposed that plaintiff sent a cease and desist letter dated
09.07.2007 to the defendant putting them on notice of the plaintiff‟s
rights in the mark INTEL and providing them with an opportunity to
amicably resolve the matter and subsequently sent a number of reminder
notices to the defendant. Copy of the legal notice dated 09.07.2007 is
exhibited as Ex.PW/10 and copy of the reminder notices dated
31.07.2007, 10.06.2008 and 2.08.2010 sent by the plaintiff to the
defendants have been exhibited as Ex.PW1/11, Ex.PW1/12 and
Ex.PW1/13. PW1 has next deposed that the defendant‟s throughout the
negotiations have been giving assurances and promises that they would
change the trading name and settle the matter amicably but despite a lapse
of more than three years the defendants have not changed their trade
name and/or amicably settled the matter.
17.Rahul Sethi, PW1, has also deposed that plaintiff is aggrieved by such
continued use of its well-known name/mark by the defendants as a part of
their trading style which constitutes a grave encroachment of their
statutory and common law rights and that defendant‟s adoption of the
Intel Land Developers Private Limited name in respect of their business
is in bad faith and mere addition of the common words Land and
Developers by the Defendant to the word INTEL does not help to
distinguish it from the plaintiff‟s INTEL mark which is well recognized
the world over including in India as associated with the plaintiff and no
one else.
18.PW1 has further deposed that defendants have copied the well-
known/mark INTEL in its entirety as a part of their trade name and such
use and adoption of the plaintiff‟s name/mark by the defendant‟s amounts
to wilful infringement of plaintiff‟s registration for the mark INTEL in
particular registration Nos. 678000, 803796 and 1240068.
19.PW1 has next deposed that plaintiff is in no way associated with the
defendant and has neither authorised nor licensed use of the mark/name
INTEL and the trade name Intel Land Developers Private Limited has
been clearly adopted by the defendant‟s to ride on the goodwill and
reputation built by the plaintiff in mark INTEL and passing off their
business as and for plaintiff‟s business as given the long and consistent
use of the domain name (www.intel.com), trade name/mark INTEL and
the extensive promotional campaigns undertaken by the plaintiff, it is
incompressible that the defendants were not aware of use and reputation
of the plaintiff‟s name/mark INTEL.
20.PW1 has also deposed that the defendant‟s trade name Intel Land
Developers Private Limited imports an obvious reference to the plaintiff‟s
well-known INTEL name/mark and the purchasing public, web viewers
and the members of the trade are likely to assume that the defendants are
somehow related to or approved of or licensed by the plaintiff to use its
name/mark which is completely false and would inevitably lead to
confusion and deception amongst the public and members of the trade for
the reasons that the mark INTEL is exclusively identified with the
plaintiff irrespective of the goods or services for which they are used in
view of extensive promotional and marketing activities undertaken by the
plaintiff in India as well as overseas and the growing use of computers in
all walks of life and the unprecedented growth of IT sector in India have
made INTEL a household name and such misuse of the Intel name can
create an unmistakable impression of defendant‟s associate with the
plaintiff in the minds of the public and members of the trade.
21. PW1 has further deposed that the plaintiff will suffer incalculable harm
and injury to its goodwill, reputation and business in general if the
defendants are allowed to carry on their aforesaid unlawful activities in
complete disregard to the statutory and common law rights of the
plaintiff.
22. I have heard counsel for the plaintiff and carefully perused the plaint
along with the documents which have been placed on record and affidavit
by way of evidence filed by the plaintiff. The evidence of plaintiff has
gone unrebutted and unchallenged. Plaintiff has proved that plaintiff is
the owner of trade mark "INTEL". A list of countries in which the
plaintiff‟s trademark containing the word INTEL is registered and/or
pending registration has been exhibited as Ex.PW1/4. Plaintiff has also
obtained registrations for the INTEL trade mark in respect of goods
covering Classes, 02, 03, 04,
05,06,07,08,10,11,12,13,14,15,17,18,19,21,22,23,24, 25, 26, 27, 28,
30,31, 32, 33, 34, 36, 37, 39, 40, 41. The legal proceedings certificates
bearing nos. 1240068 in class 99, 803796 in class 16 and 678000 in class
9 are exhibited as Ex.PW1/5, Ex.PW1/6 and Ex.PW1/7
respectively. The list of the registered trademarks under the category of
Well Known Marks of the Trade Mark Registry wherein the plaintiff‟s
mark INTEL is also mentioned has been exhibited as Ex.PW1/8. A legal
notice dated 09.07.2007 was sent to the defendants which is exhibited as
Ex.PW1/9. Despite being served and reminder letters dated 31.07.2007,
10.06.2008 and 2.08.2010 sent by the plaintiff to the defendants exhibited
as Ex.PW1/11, Ex.PW1/12 and Ex.PW1/13 respectively, the defendants
failed to change their trade name. Copy of the certificate of incorporation
of the defendant company Intel Land Developers Private Limited is
exhibited as Ex.PW1/9.
23. On the basis of documents placed on record Plaintiff has been able to
establish that plaintiff has used the mark/name INTEL as its corporate
name and on its products since 1968 and has an exclusive right to use the
same. Plaintiff has also established that on account of enormous amount
spent on advertisement during the past many years, the plaintiff has built
up an unparallel reputation and goodwill with respect to their trade
mark/trade name INTEL which has been ranked in the top 10 most
valuable brands in magazines and newspapers. Plaintiff has further
established that prior use of trade mark INTEL and superior quality of
goods provided by plaintiff under the trade mark INTEL, same is
associated solely and exclusively with the plaintiff by the members of
trade and public. Plaintiff has also established that the trade mark INTEL
has been recognized as a well known trade mark by the trade mark
registry of India. Plaintiff has further been able to establish that
defendants by adopting plaintiff‟s mark as their trading name are guilty of
infringement and passing off.
24.In the case of Bloomberg Finance LP Vs.Prafull Saklecha & Ors.
reported at 2013(56) PTC 243[Del], it was observed that:
61." The fact that the Plaintiff and the Defendants are operating in
different lines of businesses is not a good defence in an action
brought by the proprietor of a well-known mark. Even if the fields
of operation are different, it is possible that the average consumer
makes a link with the prominent well-known mark. The well-
known mark comes to signify certain qualities that transcend the
goods and services for which it is registered. Increasingly, with the
free flow of goods and services offered under well-known brands
internationally, the possibility of confusion being caused in the
minds of the average consumer in countries other than the country
of origin has to be acknowledged."
25.Similarly in the case of Laxmikant V. Patel Vs. Chetanbhai Shah And
Another, reported at (2002) 3 SCC 65, Apex court made following
observation:
"..........The law does not permit any one to carry on his business
in such a way as would persuade the customers or clients in
believing that his goods or services belonging to someone else are
his or are associated therewith. It does not matter whether the latter
person does so fraudulently or otherwise. The reasons are two.
Firstly, honesty and fair play are, and ought to be, the basic policies
in the world of business. Secondly, when a person adopts or
intends to adopt a name in connection with his business or services
which already belongs to someone else it results in confusion and
has propensity of diverting the customers and clients of someone
else to himself and thereby resulting in injury."
26. In an another case of Montari Overseas Limited Vs.
Montari Industries Limited reported at 1997 ILR Delhi 64, it was
observed that:
13............"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".
27. For the reasons stated above I am of the view that the defendants have
copied the well known mark INTEL in its entirety as a part of their trade
name „Intel Land Developers Private Limited‟ and such unauthorized and
illegitimate use and adoption of the plaintiff‟s trademark INTEL by the
defendants is in bad faith and amounts to willful infringement of
plaintiff‟s registration of the mark INTEL in particular registration nos.
678000, 803796 and 1240068. Also mere addition of the common words
Land and Developers by the defendants to the mark INTEL does not help
to distinguish it from the plaintiff‟s mark INTEL which is well
recognized the world over including India as associated with plaintiff and
no one else. Hence the dishonest adoption of the mark INTEL by the
defendant is to ride on the goodwill and reputation built by the plaintiff in
mark INTEL and to pass off their business as and for plaintiff‟s business
thus inevitably leading to confusion and deception amongst the public
and members of the trade that defendants are somehow related to the
plaintiff and licensed by the plaintiff to use its name/mark or to give an
impression that defendant company is a subsidiary company of the
plaintiff.
28. The defendants have chosen not to contest the matter and thus the plaintiff
is also entitled to the benefit of damages with a view to ensure that such
litigants desist from indulging into such activities and they are not given
benefit of the acts, which resulted to the loss to the plaintiff. It would be
useful to refer to the judgment in the case of Time Incorporated v. Lokesh
Srivastava and Anr., reported at 116(2005) DLT 599 wherein this court
has observed as under:
"This court has no hesitation on saying that the time has come
when the courts dealing actions for infringement of trademarks,
copyrights, 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".
29. For the reasons stated above, the plaintiff has made out a case for grant
of decree as prayed in the plaint. Accordingly, the order dated 13.10.2014
is confirmed and the suit is decreed in favour of the plaintiff and against
the defendants. Plaintiff is also entitled to damages to the tune of Rs.2.00
lacs.
30. Decree sheet be drawn up accordingly.
(G.S.SISTANI)
JUDGE
OCTOBER 13, 2014 /pdf
