Delhi High Court
Citigroup Inc. & Ors. vs Puneet Motwani on 29 January, 2019
5
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 1112/2018 & I.A. 12345/2018
CITIGROUP INC. & ORS. ..... Plaintiffs
Through Mr. Karan Bajaj and
Mr. Anirudh Bhatia, Advocates
Versus
PUNEET MOTWANI ..... Defendant
Through None.
% Date of Decision: 29thJanuary, 2019
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J: (Oral)
1. Present suit has been filed for permanent injunction restraining
infringement of registered trademarks, passing off, dilution of
trademark and unfair competition. The prayer clause is reproduced
hereinbelow:-
"A. The Defendant, its directors, officers, employees,
agents, distributors, suppliers, affiliates, subsidiaries,
franchisees, representatives and assigns be restrained
by a permanent injunction from :
i. Carrying on any business whatsoever under the
mark/trading name CITI, CITI WEALTH ADVISORS,
CW, CITIGROUP GLOBAL MARKETS INDIA
PRIVATE LIMITED and CITI with ARC Design or in
any other manner whatsoever holding themselves out
as agents and/or branch offices and/or in any other
manner whatsoever masquerading as the Plaintiffs
herein;
ii. Offering funds/investments applications/agreements
under the name CW MILLION OPPORTUNITIES
FUND, CW DIVERSIFIED FUND and CW QUANT
MULTIPLIER FUND or in any other name
whatsoever so as to misrepresent the fund/investment
as that of the Plaintiffs;
iii. Using the impugned mark CITI, CITIGROUP and
CITI with ARC Design or any other mark/device
deceptively or confusingly similar to the Plaintiffs'
registered trade marks CITI, CITIGROUP and CITI
with ARC Design and CITI Formative marks either as
a trade mark/device or part of a trade mark, trade
name or part of a trade name, corporate name or part
of corporate name, company name or part of a
company name, or a domain name or part of a domain
name or in any other manner whatsoever providing
services so as to infringe the plaintiffs' registered
trade marks; design/device and formative marks;
iv. Manufacturing, selling or offering for sale,
advertising, marketing or in any other manner
whatsoever providing services using the impugned
mark CITI, CITI WEALTH ADVISORS, CW, ,
, CITIGROUP GLOBAL MARKET INDIA
PRIVATE LIMITED and CITI with ARC Design
or any other mark/device deceptively or
confusingly similar to the plaintiffs' trade mark trade
marks CITI, CITI WEALTH ADVISORS, CITIGROUP
MARKETS INDIA PRIVATE LIMITED and CITI and
ARC Design and CITI Formative marks so
as to pass off the Plaintiffs' registered trade marks,
devices, deigns and formative marks;
v. Using the business card of the Indian subsidiary of the
Plaintiff No. 1-Citigroup Global Markets India Private
Limited bearing the impugned marks CITI and CITI
with ARC Design, the impugned name CITI WEALTH
ADVISORS and the email id
[email protected] and/or any other
mark/name which is identical/virtually identical and
deceptively and/or confusingly similar to the plaintiffs'
well-known trade marks CITI, CITIGROUP and CITI
with ARC Design;
vi. Disposing off or dealing with its assets in a manner
which may adversely affect the plaintiffs' ability to
recover damages, costs or other pecuniary remedies
which may be finally awarded to the Plaintiffs;
B. The Defendant, its directors, partners, officers,
employees, agents, distributors, supplier, affiliates,
subsidiaries, franchisees, representatives and assigns
be directed by a mandatory injunction:
i. To hand over to the Plaintiffs, all goods, including but
not restricted to all publications and other printed
material, letterheads, stickers, business cards and
other stationery, billboards and advertising material
or any other material whatsoever bearing CITI,
CITIGROUP and the CITI with ARC Design or any
other mark/device deceptively or confusingly similar
to the Plaintiffs' registered trade marks and formative
marks;
ii. To recall all the fund/investment applications which
may have been prosecuted under the offending
marks/name and to provide a full and fair disclose of
the undue monetary benefit gained from such
applications;
iii. To give to the Plaintiffs, a full and fair disclosure of
any and all application(s) that they may have made to
the Registrar of Trade Marks for registration of the
mark CITI, CITIGROUP and the CITI with ARC
Design or any other mark/device deceptively or
confusingly similar to the Plaintiffs' registered
trademarks and formative marks and to forthwith
withdraw such application(s);
iv. To transfer the domain name www.citiwealth.in to the
Plaintiffs or its designee forthwith.
v. To disclose if they own any domain name which is
identical / confusingly and deceptively similar to the
plaintiffs' well-known earlier and registered
trademarks and Formative marks, if so, to transfer the
said domain name(s) to the plaintiffs or its designee
forthwith;
vi. To disclose the trading name/company name
registered by the defendant which is deceptively
and/or confusingly similar to the plaintiffs' well-
known trade marks CITI, CITI WEALTH ADVISORS,
CITIGROUP GLOBAL MARKETS INDIA PRIVATE
LIMITED AND CITI with ARC Design;
vii. Deliver to the Plaintiffs for destruction all the
materials including all packaging, labels, pouches,
brochures, business cards, business envelopes,
letterheads, cartons, publicity material, pamphlets,
hoardings, signboards, stationery, application forms
etc. that bear or incorporate the impugned marks,
names or domain name or any other mark which is
identical or deceptively and confusingly similar to the
plaintiffs' well-known trade marks CITI, CITIGROUP,
CITI WEALTH, CITI with ARC Design and various
CITI Formative Marks and trade name CITI WEALTH
ADVISORS/CITIGROUP GLOBAL MARKETS INDIA
PRIVATE LIMITED;
C. The Defendant be required to render an account of all
transactions concerning the offending activities set out
in the plaint and plaintiffs be given the option of
choosing either award or damages (including penal
and exemplary damages) or accounts for profits for
the amount due.
D. Costs of the suit be awarded to the plaintiffs;
E. Any other relief which the Hon'ble Court thinks fit and
proper in the circumstances of the case be allowed in
favour of the plaintiffs and against the defendant."
2. Vide order dated 13th September, 2018, this Court had granted
an ex parte ad interim injunction in favour of the plaintiffs and against
the defendant. The relevant portion of the ex-parte injunction order is
reproduced hereinbelow:-
"Consequently, till further orders, defendants, its
directors, partners, officers, employees, agents,
distributors, suppliers, affiliates, subsidiaries,
franchisees, representatives and assigns are restrained
from carrying on any business or as corporate name or
domain name or part of a domain/company name,
whatsoever under the mark/trading name CITI, CITI
WEALTH ADVISORS, CW, CITIGROUP GLOBAL
MARKETS INDIA PRIVATE LIMITED and CITI with
ARC design or in any other manner
whatsoever holding themselves out as agents and/or
branch officers and/or in any other manner whatsoever
masquerading as the plaintiffs' herein or from offering
funds/ investment applications/agreements under the
name CW MILLION OPPRTUNITIES FUND, CW
DIVERSIFIED FUND and CW QUANT MULTIPLIER
FUND or in any other name whatsoever so as to
misrepresent the fund/investment as that of the plaintiffs
or from providing services using the impugned mark
CITI, CITI WEALTH ADVISORS, CW, ,
, CITIGROUP GLOBAL MARKETS INDIA PRIVATE
LIMITED and CITI with ARC Design or
any other mark/device deceptively or confusingly
similar to the plaintiffs' trade marks CITI, CITI
WEALTH ADVISORS, CITIGROUP MARKETS INDIA
PRIVATE LIMITED and CITI with ARC Design
and CITI Formative marks or from using
the business card of the Indian subsidiary of the
plaintiff No.1-Citigroup Global Markets India Private
Limited bearing the impugned marks CITI and CITI
with ARC Design, CITI WEALTH ADVISORS and the
email id [email protected] and/or any other
mark/name which is identical/virtually identical and
deceptively and/or confusingly similar to the plaintiffs'
trademarks CITI, CITIGROUP and CITI with ARC
Design. The Registrar is also directed to block the
plaintiffs' domain name www.citiwealth.in."
3. This Court appointed a Local Commissioner to visit the premises
of the defendant vide order dated 24th September, 2018. The Local
Commissioner visited the premises of the defendant at (1) Sector Shop
NO. 1, HSIIDC Market, HSIIDC International Road, Sector 31,
Faridabad Haryana and (2) 210, Sector 10, Faridabad, Haryana. 26th
and 27th September, 2018. The first premises of the defendant bore a
CW/CW (Stylized) mark on its door. Apart from the aforesaid label
displayed on the door, nothing else was found. The second premises of
the defendant was locked.
4. The right of the defendant to file its written statement was
closed vide order dated 18th January, 2019. Since despite service none
entered appearance on behalf of the defendant, they are proceeded ex
parte.
5. At this stage, learned counsel for the plaintiff gives up prayers
A(vi), B (i) to (iii), (v) to (vii) and C of the prayer to the suit. The
statement made by learned counsel for plaintiff is accepted by this
Court and plaintiff is held bound by the same.
6. This Court is also of the view that the present suit can be
disposed of without any further delay. A Coordinate Bench of this
Court in Satya Infrastructure Ltd. and Ors. Vs. Satya Infra &
Estates Pvt. Ltd., 2013 SCC OnLine Del 508 has held as under:-
"I am of the opinion that no purpose will be served in
such cases by directing the plaintiffs to lead ex parte
evidence in the form of affidavit by way of examination-in-
chief and which invariably is a repetition of the contents of
the plaint. The plaint otherwise, as per the amended CPC,
besides being verified, is also supported by affidavits of the
plaintiffs. I fail to fathom any reason for according any
additional sanctity to the affidavit by way of examination-
in-chief than to the affidavit in support of the plaint or to
any exhibit marks being put on the documents which have
been filed by the plaintiffs and are already on record. I
have therefore heard the counsel for the plaintiffs on merits
qua the relief of injunction."
7. It is averred in the plaint that the plaintiff No.1 is a company
established under the laws of the State of Delaware, with plaintiff
No.2 as its wholly-owned subsidiary. It is stated that the plaintiff nos.
1 and 2 operate through their Indian subsidiaries i.e. plaintiff No.3 and
Citigroup Global Markets India Private Limited.
8. It is averred in the plaint that the plaintiffs are a leading global
bank with over 100 million customer accounts and conduct business in
more than 100 countries and jurisdictions. It is stated that the
plaintiffs' retail banking network consists of more than 4,000 branches
across the globe and over 10,000 ATMs worldwide, including over
700 in India, the earliest being in 1902.
9. It is contended that the plaintiffs are internationally renowned
and world leaders inter alia in banking and financial services and own
renowned marks CITI, CITI and Arc Design , CITIBANK,
CITIGROUP, CITIFINANCIAL, CITI WEALTH ADVISORS and a
number of other well-known CITI family marks.
10. It is stated in the plaint that the plaintiffs opened their first
branch in India in Calcutta in 1902 and is now well-known amongst
the public. It is stated in the plaint that subsequent to the Citicorp
merger with Citigroup Inc. in 2005, the Plaintiff No.1 became the
owner of the aforesaid marks and that the plaintiffs have adopted CITI
and CITI with ARC Design since 2007 as its overarching brand
identity for the entire group of companies. It is also stated that CITI
brand name is the key to the branding of the plaintiffs.
11. It is averred in the plaint that mark CITI was first founded in
1812 and the plaintiffs obtained their earliest registration for the mark
CITIBANK under Class 09 of the Trade Marks Act on 15th April,
1982 with earliest user of CITI being 30th January, 1979. It is stated in
the plaint that the plaintiffs are the registered proprietors of the marks
CITI, CITI with ARC Design and CITIGROUP and several CITI
formative marks under Classes 02, 04, 09, 16, 35, 36 and 42 of the
Trade Marks Act, 1999.
12. It is also stated that the plaintiffs have a strong presence on the
internet under the domain names 'citi', 'citibank', 'citigroup',
'citicorp' and 'citicards'. The plaintiffs' websites www.citicorp.com,
www.citibank.com and www.citi.com amongst others serve as a tool
for banking and financial services of the plaintiffs, including secure
online banking.
13. It is the case of the plaintiffs that the annual revenue generated
by the plaintiffs in the year 2017 was USD 71.5 Billion. The plaintiffs
have spent millions of US dollars in promoting their CITI family of
brand names in India and the average annual marketing expenditure in
India from 2005 till date has been over USD 20 Million.
14. Learned counsel for the plaintiff states that the defendant was
employed with the plaintiffs' Indian subsidiary Citigroup Global
Markets India Private Limited between 08th June, 2015 and 25th
August, 2015. He states that on 09th September, 2018, the plaintiffs
gained information that the defendant is carrying on business under
the name and style of CITI WEALTH ADVISORS, CITIGROUP
GLOBAL MARKETS INDIA PRIVATE LIMITED and offering
fraudulent schemes/products. He further states that the defendant has
unauthorisedly mentioned the defendant's ex-employers address i.e.
Citigroup Global Markets India Private Limited, Ground Floor, Jeevan
Vihar Building, 3 Sansad Marg, Parliament Street, New Delhi -
110001 as the defendant's and that the defendant is displaying the
email id [email protected] on its business card, which is the
exact name and style as the plaintiffs' email IDs for its employees. A
screenshot of the business card of the defendant is reproduced
hereinbelow:-
15. Learned counsel for the plaintiffs states that the defendant has
also shared an application form for the fraudulent scheme/products
CW MILLION OPPORTUNITIES FUND, which contains the
plaintiffs' registered trademarks/trade name CITI and CITI with ARC
Design as well as the impugned name CITI WEALTH and the
impugned logo ,which are identical and confusingly similar to
the trade name of the plaintiffs' CITI WEALTH ADVISORS. He
states the product term sheet mentions the Piramal Group (Piramal
Fund Management Private Limited) as its sponsors. However, upon
checking with the said company, it was revealed that the Piramal
Group was not aware of the aforementioned schemes/products.
Learned counsel for the plaintiffs states the memorandum of
understanding for 'Option to Surrender' being distributed by the
defendant states disputes arising out of the memorandum of
understanding will be referred to a sole arbitrator and jurisdiction for
the same is New Delhi.
16. Learned counsel for the plaintiffs states that an online
investigation further revealed that as on 03rd August, 2018, the
defendant became the registered owner of the domain name
www.citiwealth.in. He further states the defendant is using a logo
with the acronym CW which is identical to the impugned
logo as mentioned on their application form.
17. Learned counsel for the plaintiffs further states that the
defendant's website also provides a link, wherein forms for the
aforementioned fraudulent schemes/products along with other
ancillary forms can be downloaded and upon completion are to be
submitted to an email ID [email protected] He states that the
defendant has designed its activities in such a manner that any
potential customer is likely to believe that the said website belongs to
the plaintiffs and thereby get confused with the service of the
defendant as that of the plaintiff.
18. Learned counsel for the plaintiffs states that the defendant's
adoption and fraudulent use of the impugned marks has been done
with the intent to usurp and take unfair advantage of the reputation of
the plaintiffs' well-known trademarks CITI, CITI with ARC Design
and trade name CITI WEALTH ADVISORS, CITIGROUP GLOBAL
MARKETS INDIA PRIVATE LIMITED. He states that the
defendant's use of the abbreviation CW on its website, for other
fraudulent funds and CITI WELATH on the application form displays
the defendant's mala fide intent to try and portray that he is somehow
associated with the plaintiff. He further states that the activities of the
defendant amount to infringement of the plaintiffs' trademarks.
19. He lastly states that the plaintiffs have filed a criminal
complaint with the Economic Offences Wing, Delhi Police on 11 th
September, 2018.
20. In the opinion of this Court, the defendant has no real prospect
of defending the claim, as it has neither entered appearance nor has it
filed its written statement. Further, the plaintiffs are the registered
owners of the trade marks in question.
21. In view of the above, the present suit is decreed in favour of the
plaintiffs and against the defendant in accordance with prayer A (i) to
(v) and B (iv) of the present plaint along with actual costs. The costs
shall amongst others include lawyers' fees as well as the amounts
spent on purchasing the Court fees. The plaintiffs are given liberty to
file on record the exact cost incurred by them in adjudication of the
present suit, if not already filed. Defendant is directed to transfer the
impugned domain name www.citiwealth.in to the plaintiffs or its
assignee. Registry is directed to prepare a decree sheet accordingly.
22. With the aforesaid observations, present suit and pending
application stand disposed of.
MANMOHAN, J
JANUARY 29, 2019
mn
