Delhi High Court
Tata Sons Limited & Anr vs Shashi Prakash Singh & Anr on 11 September, 2014
$~ 04
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 674/2008
% Date of decision :11th September, 2014
TATA SONS LIMITED & ANR ..... Plaintiffs
Through: Mr.Achutan Kumar and Mr Karan Kumar
Kamra, Advs
versus
SHASHI PRAKASH SINGH & ANR ..... Defendants
Through:
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (ORAL)
1. Plaintiffs have filed the present suit for permanent injunction restraining
infringement of Trade mark, Passing Off, Damages, Rendition of accounts
and Delivery Up.
2. Summons in the suit were issued on 11.04.2008. Since the defendant no. 1
could not be served through ordinary service despite repeated efforts, the
plaintiffs filed I.A No. 10187/2011 under Order V Rule 20 CPC for
substituted service. The said application was allowed on 08.09.2011 and
the defendant no. 1 was directed to be served by way of publication. On
28.02.2012 court noticed that the defendant no. 1 was served in the
newspaper "Hindustan Times" dated 10.11.2011 was also placed on
record. Since none appeared on behalf of the defendant no. 1 despite
service through publication, vide order dated 13.04.2012 the defendant
no. 1 was proceeded ex parte.
3. Counsel for the plaintiffs submits that defendant no. 2 is a proforma party
and that service of defendant no. 2 is not required. Plaintiffs were also
directed to file ex parte evidence by way of affidavit which was taken to
be complete on 02.07.2014.
4. Plaintiffs have filed affidavit by way of evidence of Mr. V. Gurumoorthi
(PW1), the Constituted Attorney of the Plaintiff No. 1 Company. Copy of
power of attorney and a copy of board resolution in favor of PW1 have
been exhibited as Ex. PW 1/1 and Ex. PW1/2. PW1 has deposed that the
plaintiff no. 1, Tata Sons Limited is a company duly incorporated under
the Indian Companies Act, 1913 having its registered office at Bombay
House, 24 Homi Mody Street, Mumbai 400 001 and also conducts
business at Jeevan Bharti Building, 10th Floor, Tower 1, 124 Connaught
Circus, New Delhi 110 001. A copy of the certificate of incorporation of
the plaintiff company has been exhibited as Ex. PW 1/3.
5. PW1 has also deposed that the plaintiff no 1, Tata Sons Ltd. was
established in the year 1917 as a body corporate and 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
$83.3 billion (around Rs3,796.75 billion) in 2010-11, with 58 per cent of
this coming from business outside India. PW1 has further deposed that
the plaintiff no.1 is one of India‟s most trusted business houses and the
name/trademark TATA, derived from the surname of the founder Jamsetji
Nusserwanji Tata is a household name synonymous with excellence in
almost every field of business activity.
6. PW1 has next deposed that the enterprises promoted by TATA have laid
the foundation in the industrial core sectors, pioneering the iron & steel,
textiles, power, chemicals, hotels and automobile industries in India and
keeping pace with the changing global scenario, TATA branched out into
computers and computer software, electronics, telecommunications,
financial services, mutual funds, tea and publishing. PW1 has also
deposed that for the year 2006, Forbes, an American publishing and
media company, has ranked TATA Group at the 20th position among the
world‟s most reputed companies and as the largest Indian group in terms
of revenues and market capitalization and the TATA Group is the only
Indian group or company to be listed among top 20 companies of the
world in terms of corporate reputation.
7. PW1 has further deposed that the TATA Group has been ranked 6th
in the list of World's 50 Most Innovative Companies by Business
Week, for the year 2008 and TATA brand has also been ranked 57th
among top 100 brands worldwide, listed by Brand Finance, an
independent company focused on the management and valuation of
brands. Few of the documents pertaining to the "well known" status,
reputation and goodwill enjoyed by the plaintiff company like
photocopies of extracts from newspaper articles, magazine write-ups
pertaining to the House of TATA and pamphlets issued by the Trade
Marks Registry showing TATA as a well-known trademark have been
marked as Mark C and Mark D respectively. Also copy of the original
compendium on the financial highlights of the plaintiff company and its
group companies has been exhibited as Ex.1/10
8. Mr V Gurumoorthi, PW1 has further deposed that since 1917, the plaintiff
no. 1 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 companies promoted by it and the use of the trademark and name
TATA by the plaintiff‟s predecessors in business dates back to 1868. PW1
has next deposed that on account of the highly distinctive nature and the
pioneering activities of the founder, the name TATA acquired an
excellent reputation from the very beginning and down the decades, the
name has consistently been associated with, and exclusively denotes the
conglomeration of companies forming the TATA Group, colloquially also
referred to as the "House of TATA", known for high quality of products
manufactured and or services rendered under the trademark/ name TATA.
9. PW1 has also deposed that 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 and in addition, there are numerous overseas
companies, philanthropic bodies and autonomous public institutions
promoted by the House of TATA.
10. PW1 has also deposed that the plaintiffs are the proprietors of the
trademark TATA by virtue of priority in adoption, long, continuous and
extensive use and the plaintiffs and its group companies have exclusively
used TATA as a trademark so that it is uniformly perceived as indicative
of the source of the plaintiffs and the companies promoted by the House
of TATA.
11. PW1 has further deposed that the plaintiffs being the proprietors of the
TATA trademarks enjoy exclusive rights in the said trademarks and are
entitled to take action against unauthorized use thereof by third parties for
any goods or services. PW1 has also deposed that the plaintiffs have
successfully and vigorously enforced their trademark rights in the TATA
trademarks in relation to various goods and services, even those that are
different and unrelated from its existing field of operations. Copies of the
Orders passed by various Courts of India and abroad as well as various
other tribunals, forums etc. protecting the well-known trademark „TATA‟
of the plaintiffs have been exhibited as Ex.PW1/12 to Ex. PW1/18
12. PW1 has also deposed that in addition to the common law rights that have
accrued to the plaintiffs by virtue of the aforesaid facts, it is also the
registered proprietor of several TATA-formative trademarks in relation to
various goods across various classes of the Fourth Schedule of the Trade
Marks Rules, 2002. Further it has been deposed by PW1 that the
plaintiffs owns trade mark registrations for the word TATA in over 50
countries besides India and by virtue of the said registrations, the
plaintiffs have the exclusive right to use the trademark TATA in relation
to the goods covered there under and to obtain relief in respect of the
infringement of the registered trademarks
13. PW1 has next deposed that the plaintiff no. 1 is the proprietor of several
trademarks comprising or containing the mark TATA in Class 12 and
certificates for use in legal proceedings for the following trademark
registrations of the plaintiff no. 1 in Class 12 are exhibited as:
(i) Trademark registration no. 299110 - Ex PW 1/19.
(ii) Trademark registration no. 585377 - Ex PW 1/20.
(iii) Trademark registration no. 569378 - Ex PW 1/21.
(iv) Trademark registration no. 300234 - Ex PW 1/22.
(v) Trademark registration no.585376 - Ex PW 1/23.
(vi) Trademark registration no. 1191273 - Ex PW 1/24.
(vii) Trademark registration no. 569382 - Ex PW 1/25.
Further the photocopies of registration certificates of various registrations
owned by the plaintiff no. 1 as regards the mark TATA in Class 12 have
been marked as Mark J (Colly.) and a list of some of the trademark
registrations in favour of the plaintiff no. 1 and its Sister Concerns in
India comprising the word TATA in various classes has been marked as
Mark K.
14. PW1 has also deposed that in the year 2011, taking into consideration
various orders passed by Courts / Tribunals etc., the Trade Mark Office
(Controller General of Patents, Designs and Trade Marks) has
acknowledged and assigned the plaintiff‟s trade mark TATA, the status of
a "well known" trade mark. A printout from the website of the Trade
Mark Office illustrating this fact has been exhibited as Ex PW 1/26.
15. PW1 has further deposed that the plaintiff no. 2 is the proprietor of several
marks comprising of or containing the word NANO in Class 12 and
various other marks containing the mark TATA which is owned by the
plaintiff no. 1. The use of the mark TATA by the plaintiff no. 2 is
pursuant to a written authority from the plaintiff no. 1 which has been
marked as Mark L.
16. Mr V Gurumoorthi, PW1 has further deposed that the defendant no. 1 had
registered the domain name www.tatananoindia.com and is the registrant
of the impugned domain name www.tatananoindia.com. The defendant
no. 2 is the sponsoring registrar and after registering the domain name
www.tatananoindia.com, the defendant no. 1 approached the plaintiff no.
2 and offered to sell the domain name. PW1 has next deposed that the
defendant no. 1 in his email dated 14.1.2008 stated that he has registered
the domain name especially for the plaintiff‟s new car - TATA NANO
and wished to sell the same to the plaintiffs. A copy of the „who is‟ search
result of the domain name www.tatananoindia.com showing the defendant
no. 1 as the registrant has been exhibited as Ex. PW 1/27 and printouts of
the emails received from the Defendant No. 1 have been exhibited as Ex.
PW 1/28.
17. PW1 has also deposed that the impugned domain name of the defendant
no. 1 is inherently deceptive, causes confusion and constitutes
misrepresentation to unwary customers and members of trade that such
activities and the services rendered have been endorsed by the plaintiffs.
PW1 has further deposed that the defendant no. 1 is trying to free ride on
the immense goodwill and reputation of the plaintiffs‟ trademarks TATA /
TATA NANO.
18. PW1 has next deposed that the adoption of the domain name identical to
the plaintiff‟s trademark TATA / TATA NANO is a clear and dishonest
attempt on part of the defendant no. 1 to derive unfair advantage by
creating the impression that its services emanate from the plaintiffs or
have some nexus or connection with the plaintiffs.
19. PW1 has also deposed that having regard to the fact that the trademark
TATA / TATA NANO is a "well known" mark and that the TATA
companies are engaged in a wide spectrum of activities using the
trademark TATA, the use of an identical trademark/name by the
defendant would create confusion and deception in the minds of the
public who will be misled into registering for the defendant‟s services
enabling unjust enrichment of the defendant at the plaintiff‟s and the
consumers‟ expense.
20. PW1 has further deposed that the use of the mark TATA / TATA NANO
by the defendant also amounts to false trade description as defined under
the provisions of the Trade Marks Act, 1999, inasmuch as it induces the
public to falsely believe that:
(a) the Defendants have a direct nexus or affiliation with the Plaintiff
or the House of TATA; or
(b) the Defendants have been granted a license to use the trademark
TATA / TATA NANO in relation to the concerned
products/services; or
(c) the business of the Defendants have been endorsed by the Plaintiff.
21. Plaintiffs have also filed evidence by way of affidavit of Mr. M. K. Bipin
(PW2), the Constituted Attorney of the plaintiff no. 2 Company. A copy
of the Power of Attorney dated 08.06.2011 in favor plaintiff no. 2 has
been exhibited as Ex. PW 2/1. PW2 has deposed that the plaintiff no. 2
has a website by the name www.tatamotors.com and that relevant print-
outs from the said website have been exhibited as Ex PW 2/6 (colly.).
22. PW2 has also deposed that the plaintiff no. 2 is India's largest automobile
company, with consolidated revenues of INR 1, 65,654 crores (USD 32.5
billion) in 2011-12 and is the world‟s fourth largest truck and bus
manufacturer. PW2 has further deposed that plaintiff no. 2 is the leader in
commercial vehicles in each segment, and among the top three in
passenger vehicles with winning products in the compact, midsize car and
utility vehicle segments.
23. PW2 has next deposed that established in 1945, the plaintiff no. 2‟s
presence cuts across the length and breadth of India with over 7.5 million
TATA vehicles plying on Indian roads and that the plaintiff no. 2 is the
first company from India's engineering sector to be listed in the New York
Stock Exchange (September 2004) and has also emerged as an
international automobile company.
24. Mr M.K Bipin, PW2 has further deposed that through subsidiaries and
associate companies, the plaintiff no. 2 has operations in the UK, South
Korea, Thailand, Spain and South Africa and the plaintiff no. 2 is also
expanding its international footprint, established through exports since
1961. Further, the company's commercial and passenger vehicles are
already being marketed in several countries in Europe, Africa, the Middle
East, South East Asia, South Asia etc.
25. PW2 has also deposed that plaintiff no. 2 is focused on environment-
friendly technologies in emissions and alternative fuels and has developed
electric and hybrid vehicles both for personal and public
transportation.PW2 has next deposed that in January 2008, the plaintiff
no. 2 unveiled its People's Car, the TATA NANO, which was
subsequently launched in India in March 2009, a development, which
signifies a first for the global automobile industry, the NANO brings the
comfort and safety of a car within the reach of thousands of families.
26. PW2 has also deposed that the plaintiffs also have an official web-site for
the car TATA NANO available at www.tatanano.com and the domain
name has been registered in favour of the plaintiff no. 1 and a copy of the
„who is‟ search result pertaining to the said domain name has been
exhibited as Ex PW 2/7. Also printouts of the relevant pages from the
web-site www.tatanano.com and various articles and write-ups that very
clearly illustrate the immense goodwill and reputation associated with the
plaintiffs‟ car sold under the trade mark TATA NANO have been
exhibited as Ex PW 2/8(colly) and Ex PW 2/9.
27. PW2 has further deposed that the plaintiff no. 2 and the other TATA
companies are the proprietors of several trademark registrations
containing the word NANO in Class 12. Original Certificates for use in
legal proceedings as regards some of the registrations have been exhibited
as Ex. PW2/10 to Ex.PW2/16.
28. Mr M.K Bipin, PW2 has also deposed that the defendant no. 1‟s domain
name www.tatananoindia.com incorporates the plaintiff no. 2‟s trademark
TATA NANO which has been extensively used by the plaintiffs much
prior to that of the defendant and such use by the defendant no, 1 amounts
to infringement of the plaintiffs‟ registered trademarks as well as amounts
to passing off the defendant‟s goods/services as that of the plaintiffs‟ and
the defendant no. 1‟s malafides are further evident from the fact that after
registering the impugned domain name www.tatananoindia.com in his
name, the defendant no. 1 contacted the plaintiff no. 2 offering to sell the
domain name.
29. PW2 has next deposed that by using the impugned domain name, the
defendant no. 1 is defrauding the general public and is likely to continue
to mislead, deceive or confuse the public and members of trade by making
them believe that the defendant no. 1 have the approval or license of the
plaintiffs to carry on business under the said domain name / trademarks
and trading style or that their activities are in some manner or the other
connected with or derived from the business of the plaintiffs, so as to pass
off and earn huge and illegal profits.
30. Plaintiffs have also filed evidence by way of affidavit of Mr Subroto
Panda (PW3), the Manager IT of the Legal representatives of the plaintiffs
i.e. Anand and Anand Advocates. PW3 has deposed that his duties entail
administering the Electronic resources of the legal representatives of the
plaintiffs, including ensuring the integrity and storing of past and present
Electronic Communication and information downloaded from the World
Wide Web (Internet) as well as maintaining email archives.
31. PW3 has further deposed that the requirements of Section 65B of the
Indian Evidence Act, 1872 with respect to documents downloaded have
been complied with.
32. I have heard counsel for the plaintiffs and carefully perused the plaint
along with the documents which have been placed on record and affidavit
by way of evidence filed by the plaintiffs. The evidence of plaintiffs has
gone unrebutted and unchallenged. Plaintiffs have proved that they are the
owner of trade mark "TATA" and own trade mark registrations for the
word "TATA" in over 50 countries besides India. Plaintiffs have also
proved that the plaintiffs are the registered proprietors of several TATA
formative trade marks in relation to various goods across various classes
of the fourth schedule of the Trade Mark Rules 2002. Trade Mark
registration certificates of the trade mark "TATA" in class 12 of goods in
favour of the plaintiffs have been marked as Mark J and a list of the trade
mark registrations in favour of Plaintiff No.1 and its sister concerns in
India comprising the term TATA in various classes has been marked as
Mark K. Plaintiffs have also proved that plaintiff no. 2 is the proprietor
of several trade mark comprising or containing the term NANO in class
12 and original certificates for use in legal proceedings have been
exhibited as Ex.PW2/10 to Ex.PW2/16. Plaintiffs have relied upon
various orders passed in their favour proving that the rights of the plaintiff
company in the trademark TATA and TATA NANO have been
recognized by courts/tribunals not only in India but abroad as well.
Plaintiffs have also relied upon extracts from newspaper and magazine
write ups which have been marked as Mark C and Mark D respectively
and copy of the original compendium on the financial highlights of the
plaintiff company and its group companies which has been exhibited as
Ex. 1/10 showing TATA as a well known trade mark.
33. Section 2(1)(zg) of the trdae Marks Act, 1999 defines "well known
trade mark", in relation to any goods or services as a mark which has
become so to the substantial segment of the public which uses such goods
or receives such services that the use of such mark in relation to other
goods or services would be likely to be taken as indicating a connection in
the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first mentioned
goods or services.
34. In the case of Tata Sons Ltd v Manoj Dodia and Ors, reported at
2011(46)PTC244(Del), following observations were made by another
bench of this court with respect to the factors that ought to be looked into
while considering what constitutes a "well known mark":
"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." In my
view the mark of the plaintiff satisfies all the necessary ingredients for
falling in the category of a well known mark.
35. In the case of TATA Sons Ltd v. A.K Chaudhary & Anr, CS(OS)
842/2002 decided on 6.04.2009, 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.
36. On the basis of documents placed on record, the plaintiffs have been able
to establish that the plaintiff no. 1 is the registered owner of trade mark
"TATA" and by virtue of the registrations it holds, the plaintiff no.1 has
the exclusive right to use the trade mark TATA. Plaintiffs have also been
able to establish that plaintiff no. 2 is part of a group of companies
popularly referred to as the TATA Group of Companies and in January
2008, the plaintiff no. 2 unveiled the TATA NANO car and the plaintiffs
also have an official web-site for the car TATA NANO available at
www.tatanano.com. Further, plaintiffs have been able to establish that the
plaintiffs have been continuously and consistently using the trade mark
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 companies promoted by it and that the trade mark TATA is
uniformly perceived as indicative of the source of the plaintiffs. Plaintiffs
have also been able to establish that as a result of the continuous and
extensive use of the trade mark TATA by the plaintiffs coupled with vast
promotion and publicity, the trade mark TATA enjoys an unparalleled
reputation and goodwill and has acquired the status of a "well-known"
trade mark.
37. In a recent judgment delivered by another bench of this court, Mind Gym
Ltd v. Mindgym Kids Library Pvt. Ltd CS(OS) 1029/2013, decided on
21.03.2014, plaintiffs who were carrying on business under the trade mark
"MIND GYM" sought permanent injunction against the defendants
restraining them from infringement and/or passing off the plaintiff‟s rights
by using the trademark "MINDGYM" as part of latter‟s corporate
name/trademark. Following observations were made by the court:
"9........
(ii)In the case of Evergreen Sweet House v. Ever Green and Ors.
2008 (38) PTC 325 (Del), it was observed as under:
15. A mark, is said to be deceptively similar to another
(Section 2(1)(h), Trademarks Act, 1999) if it so nearly resembles
that other mark as to be likely to deceive or cause confusion.
Section 29(1) deals with a situation where the defendant uses a
mark, which is identical or deceptively similar to that of the
plaintiff, in respect of the same goods or services, and in such
manner that it is likely that such use is taken as being an use as a
trademark. This amounts to infringement. To fall within
Section 29(1), the defendant's use of the mark must be so that it is
likely that the public assumes that the said mark is used as a
trademark. Section 29(2) deals with three situations; one where
the defendants mark is identical to that of the plaintiff and in
respect of similar goods. Two, where the marks are similar and in
respect of goods which are identical or similar. Three, the marks
as well as the goods are identical. Infringement does not take
place if only one of the three ingredients are satisfied; the plaintiff
has to prove that use by the defendant is likely to cause confusion
on the part of the public or is likely to have an association with
the registered mark.
38. The Apex Court in the case of Laxmikant V Patel v. Chetanbhai Shah
And Another reported at (2002) 3 SCC 65, has laid down the test of
confusion/deception in order to prove the case of passing off. Relevant
para of the aforesaid judgment reads as under:
"A person may sell his goods or deliver his services such as in case
of a profession under a trading name or style. With the lapse of
time such business or services associated with a person acquire a
reputation or goodwill which becomes a property which is
protected by courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in
injury to the business of one who has the property in that name. 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 he
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."
39. Having regard to the evidence on record, I am of the view that the trade
mark TATA is a well known mark enjoying an expansive reputation and
immense goodwill without boundaries of classification and that the TATA
companies are engaged in a wide spectrum of activities using the trade
mark TATA and the said trademark has come about to be exclusively
recognized as the source indicator of the goods and business of the
plaintiffs using the trademark TATA. The impugned domain name
<TATANANOINDIA.COM> adopted by the defendant no. 1 wholly
contains the plaintiff‟s trademark TATA and NANO and such use of the
domain name that is phonetically and visually identical to the plaintiff‟s
no. 1 registered trademark TATA amounts to infringement of the
plaintiff‟s statutory rights in the trademark. Also the use of the impugned
domain name identical to the plaintiff‟s trademarks TATA and NANO is
dishonest and malafide attempt by the defendant no.1 to derive unfair
advantage by causing confusion and deception in the minds of the public
and creating the impression that its services emanate from the plaintiff‟s
or have some connection, nexus, association, affiliation with or
endorsement from the plaintiff‟s. The act of the defendant no.1 is a blatant
attempt on its part to ride on the hard earned goodwill and reputation of
the plaintiff that has been acquired by the latter over a period of years.
Therefore, defendant no.1 is guilty of passing off its services as those of
the plaintiffs, thus illegally exploiting the latter‟s goodwill and diluting
their well reputed trade mark.
40. In view of the above, the plaintiffs are entitled to a decree of permanent
injunction against the defendant no.1 from the use, including by
advertising, directly or indirectly, selling or offering their services under
the domain name TATANANOINDIA.COM, or any other deceptively
similar mark, name , domain name or device of which the word TATA
forms a part or which resembles the distinctive logo of plaintiffs‟ and
from doing any other thing as may be likely to cause confusion or
deception and leading to infringement of plaintiffs‟ trademark TATA, in
terms of prayer (a) and (b) in paragraph 26 of the plaint.
41. As seen in the order dated13.04.2012, counsel for the plaintiffs submitted
that defendant no.2 is a proforma party and is only an enforcing agency.
Also, as and when any order is passed by this court defendant no.2 will
enforce the same.
42. The plaintiffs have also claimed damages on account of unauthorized use
of the impugned domain name by the defendants along with delivery up
of all the blocks, dies, stationery, packing material or any other printed
matter bearing the impugned mark/name. Plaintiffs have also claimed
rendition of accounts of profits earned by defendant no.1 on account of
the use of impugned domain name. However, plaintiffs have limited their
claim to punitive damages.
43. In Microsoft Corporation v. Deepak Raval reported at MIPR 2007 (1) 72,
this Court observed that in our country the Courts are becoming sensitive
to the growing menace of piracy and have started granting punitive
damages even in cases where due to absence of Defendant, the exact
figures of sale made by them under the infringing copyright and/or
trademark, exact damages are not available. The justification given by the
Court for award of compulsory damages was to make up for the loss
suffered by the plaintiff and deter a wrong doer and like-minded from
indulging in such unlawful activities.
44. In Larsen and Toubro Limited v. Chagan Bhai Patel reported at MIPR
2009 (1) 194, this Court has observed that it would be encouraging the
violators of intellectual property, if the Defendants notwithstanding
having not contested the suit are not burdened with punitive damages.
45. In case of Time Incorporated v. Lokesh Srivastava and Anr., reported at
2005 (30) PTC 3 (Del), the court has recognized third type of damages as
punitive damages apart from compensatory and nominal damages. The
court has held that:
"The award of compensatory damages are aimed at deterring a
wrong doer and the like minded from indulging in such unlawful
activities."
"This Court has no hesitation in saying that the time has come when
the Courts dealing actions infringement of trademark, copy rights,
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."
46. For the reasons stated above, the plaintiffs have made out a case for grant
of decree as prayed in the plaint. Accordingly, the order dated 11.09.2014
is confirmed and the suit is decreed in favour of the plaintiffs and against
the defendant no. 1. Plaintiffs are also entitled to damages to the tune of
Rs.2.00 lacs. Defendant no.2 is directed to transfer the impugned domain
name TATANANOINDIA.COM to plaintiff no.1.
47. Decree sheet be drawn up.
I.A.4504/2008.
48. Application stands disposed of in view of the order passed in the suit.
G.S.SISTANI, J
SEPTEMBER 11, 2014
msr
