Delhi High Court
Tata Sons Ltd vs Neil Sombuntham & Anr on 3 March, 2015
$~17
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 3476/2012
Date of Decision:March 3, 2015
TATA SONS LTD ..... Plaintiff
Through Pravin Anand, Achuthan Sreekumar
and Karan Kamra Advs
versus
NEIL SOMBUNTHAM & ANR ..... Defendant
Through None
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
CS(OS) 3476/2013
JAYANT NATH, J. (ORAL)
1. The Defendants were ex-parte and ex-parte evidence of plaintiff was
recorded vide order dated 25.04.2014. Arguments have been heard in this
suit.
2. The plaintiff has filed the present suit seeking a decree of permanent
injunction against the defendant for infringement of the registered Trade
Mark of the plaintiff „TATA‟ and for claiming rights in their registered
Trade Mark.
3. It is the contention of the plaintiff that it was established in the year
1917 as a body corporate and the promoter and principal investment
holding company of the House of TATA. The plaintiff and other Tata
companies are India‟s oldest and largest private-sector employer including
Tata Steel, Tata Motors, Tata Power, Tata Chemicals, etc. The enterprises
promoted by the plaintiff have laid the foundation in the industrial core
sectors, pioneering textiles, iron & steel, power, chemicals, hotels, and
automobile industries in India. In 2009, the plaintiff was ranked as the
world‟s 11th most reputed company according to a study complied by a
United States based Reputation Institute. The average turnover of the House
of TATA is assessed at USD 100 billion (around Rs.4,757.21 billion)
4. It is contended by the plaintiff that the said trademark „TATA‟ was
commercially launched in India by the plaintiff in the year 1917. It is
further contended that since then the said trademark in respect of the
aforesaid goods has been used continuously by the plaintiff in India over a
long period and thus has become distinctive. The plaintiff also states that
the trademark „TATA‟ has enjoyed an unparalleled reputation and goodwill
as the said trademark in the aforesaid goods has been continuously and
extensively used and has acquired the status of a „well-known‟ trademark.
5. It is stated that the trademark „TATA‟ is registered in India in class
44 under registration no. 1994176. The details of the trademark
registrations of the plaintiff are provided in para 14 of the plaint.
6. It is also stated that the plaintiff has filed a number of cases in this
Court and the WIPO Arbitration and Mediation Centre against the misuse
of its trademark in relation to domain names.
7. It is contended by the plaintiff that the defendant no.1 was running a
spa in San Francisco, United States of America and is the Registrant of the
impugned domain name "www.tatamassage.com". The impugned domain
name was registered by the defendant on 4th October, 2011. The plaintiff
also states that the Defendant no1 has misappropriated the well know
trademark „TATA‟ of the plaintiff as a part of its domain name which is
fully functional with dishonest intentions to capitalize the goodwill and
reputation for the said well established trade name of the plaintiff in global
market. The plaintiff also states that the word „TATA‟ is a „well-known‟
trademark of the plaintiff and it is the statutory and common right of the
plaintiff to protect the said trademark from being infringed either by
adoption of the same as a trademark or by the use of the same as a domain
name.
8. The plaintiff contends that it has also established its name in the field
of hospitality industry i.e. Indian Hotels Company Ltd. (HCL) and its
subsidiaries, collectively known as Taj Hotels, Resorts and Palaces which is
also one of Asia‟s largest and finest groups of hotels. It is contended by the
plaintiff that plaintiff‟s sister concern around the world are under the name
JIVA. All JIVA Spas categorically state that they are a „TATA Enterprise‟
and provide international spa services of international standards. The
Plaintiff and its group companies have various online internet portals in the
fields of entertainment, media, shares, shopping etc widely by customers
worldwide.
9. The defendant is stated to be the registrant of the impugned domain
name www.tatamassage.com. Defendant No.2 is a proforma defendant and
the relief sought against said defendant No.2 is to effectuate transfer of the
impugned domain name in favour of the plaintiff. The said domain name
was registered by defendant No.1 on 4.10.2011. It is urged that the domain
name used by the defendant includes the words TATA which is identical as
a whole to the well known trademark and service mark TATA.
10. That during late October-early November, 2012, the plaintiff came to
know that the defendants are the Registrant of the impugned domain name
"www.tatamassage.com". Moreover defendant no.1 has uploaded
photographs of several Hindu Gods and Goddess on their impugned website
"www.tatamassage.com" in order to show nexus with India and the
Plaintiff‟s trademark. The plaintiff has been prejudiced by the said
infringement.
11. The plaintiff has filed evidence by way of affidavit of
Mr.V.Gurumoorthi. He has exhibited 24 documents as Ex.PW1/1 to
Ex.PW1/24. Another affidavit of Mr.Panda has also been filed reiterating
the submissions made in the plaint.
12. In view of the averments made in the plaint and the documents
placed on record the plaintiff has established that the said trademark
„TATA‟ is exclusively associated to the plaintiff and its products/services.
The trademark „TATA‟ is registered in their favour in class 44 in India. The
copyrights are also duly registered in favour of the plaintiff. It is further
established that the defendants have malafidely copied the well known
trademark as that of the plaintiff with all its features in relation to their
impugned domain name "www.tatamassage.com" which they are trying to
pass-off as originating from the plaintiff.
13. In view of the above a decree of permanent injunction is passed in
favour of the plaintiff and against the defendants restraining the defendant
and also their agents, representatives, distributors, etc from manufacturing,
selling, using, displaying, advertising directly/ indirectly dealing in the
business of spa massage parlour under the trade name, TATA MASSAGE
or the domain name "www.tatamassage.com" and/or using any
trademark/name/description/device bearing the trademark „TATA‟.
Defendant No.2 shall erase the said domain name, namely,
www.tatamassage.com or transfer it to the name of the plaintiff.
14. No orders as to cost. Suit is disposed off.
JAYANT NATH, J.
MARCH 03, 2015
