Delhi High Court
Tata Power Solar Systems Limited & Anr. vs Www.Tatapowersolardealership.Co.In ... on 13 February, 2025
Author: Amit Bansal
Bench: Amit Bansal
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 13th February, 2025
+ CS(COMM) 419/2024, I.A. 29729/2024, I.A. 35874/2024 & I.A.
41465/2024
TATA POWER SOLAR SYSTEMS LIMITED & ANR.
.....Plaintiffs
Through: Mr. Peeyoosh Kalra, Mr. C.A.
Brigesh, Ms. Krisna Gambhir & Ms.
Simranjot Kaur, Advocates.
versus
WWW.TATAPOWERSOLARDEALERSHIP.CO.IN & ORS.
.....Defendants
Through: Ms. Aishwarya Kane, Advocate for
D-4.
Mr. Rishabh Dev Mishra, Advocate
for D-5.
Mr. Arvind Singh Negi, Advocate for
D-6.
Mr. Aayushmaaan Vatsyayana,
Advocate for D-7.
Mr. Kishan Rawat, Advocate for D-8.
Mr. Sagar Aggarwal & Ms. Kanika
Baweja, Advocates for D-9.
Mr. Santosh Kumar Rout, Standing
Counsel for PNB with Ms. Dharna
Veragi, Mr. B.N. Mishra & Ms.
Shilpa Chaursia, Advocates for D-11.
Ms. Shivani Shah, Mr. Amandeep
Singh & Mr. Dev Bhardwaj,
Advocates for D-12.
Mr. Krishna Kumar Sharma, Mr.
Signature Not Verified
Digitally Signed
By:DHARMENDER SINGH
CS(COMM) 419/2024 Page 1 of 13
Signing Date:19.02.2025
17:12:55
Manokul Chandra & Ms. Srishti
Guha, Advocates for D-13.
Mr. Sarfaraz Khan, Advocate for D-
14.
Ms. Mrinal Ojha, Mr. Debarsh Dutta,
Ms. Nikita Rathi & Mr. Arjun
Mookerjee, Advocates for D-19.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present suit has been filed seeking relief of permanent injunction
restraining the defendants from infringing the trademark of the plaintiffs,
passing off their goods and services as that of the plaintiffs, along with other
ancillary reliefs.
PLEADINGS IN THE PLAINT
2. Plaintiff no.1, Tata Power Solar Systems Limited, was incorporated in
1989 and is the one of the largest solar company in India specializing in high
efficiency photovoltaic (PV) module manufacturing and comprehensive
engineering, procurement and construction (EPC) solutions. Plaintiff no.1 is
the subsidiary of Tata Power Renewable Energy Limited, which is itself a
subsidiary of Tata Power Company Limited ('TPCL').
3. Plaintiff no. 2 was established through its predecessor-in-title in the
year 1917 as a body corporate. The plaintiff no. 2 is the promoter and
principal investment holding company of various TATA Companies
including TPCL which are engaged in business of wide-range of products
and services. On 14th September, 2012, the plaintiff no.1 entered into a
Brand Equity and Business Promotion agreement with the plaintiff no.2 to
pool their resources and make a co-operative effort to promote a unified
common 'TATA' brand.
4. It is asserted in the plaint that the trademark 'TATA' derived from the
surname of the plaintiff no.2's founder is distinctive in nature. Due to its
continuous and extensive use since 1917, the said mark has acquired a
secondary meaning, associating it exclusively with the conglomeration of
'TATA' Companies.
5. The plaintiffs have been using 'TATA' and 'TATA POWER
SOLAR' formative trademarks since February, 2020. The plaintiff no.2 is
the registered proprietor of the trademark 'TATA POWER SOLAR' and its
formative marks under different classes in India. The relevant trademark
registrations of the plaintiffs as given in paragraph 9 of the plaint are set out
below:
Registration Trademark Classes Date of Valid Upto
no. Application/
User Date
839726 TATA (Word 9 03.02.1999 03.02.2029
Mark)
838425 9 27.01.1999 27.01.2029
4159218 TATA POWER 9, 11 26.04.2019 26.04.2029
(Word Mark) and 37
5460092 4, 9, 19, 24.05.2022 24.05.2032
37, 40
and 42
The Certificates of Registrations are filed as documents no. 16, 17 and 18 of
the documents filed along with the plaint. All the aforesaid trademark
registrations remain valid and subsisting.
6. The products of the plaintiffs bearing 'TATA POWER SOLAR'
formative trademarks are advertised through the plaintiffs' website,
'www.tatapowersolar.com'. The domain name 'www.tatapowersolar.com'
was registered on 13th June, 2012. Since then, the plaintiffs have been using
the said domain name continuously and uninterruptedly.
7. Over the years, the plaintiff no.1 has earned various awards and
accolades on account of its ambitious approach towards creating innovative
solutions to meet the growing energy demands while reducing carbon
footprints. The plaintiffs also have presence on various social media
platforms such as Facebook, Instagram, YouTube, etc. As a result of their
online presence and several awards earned by the plaintiffs in the past four
years, the trademark 'TATA POWER SOLAR' and other registered
trademarks of the plaintiffs enjoy immense reputation and goodwill among
consumers.
8. During the period between 2020-2024, the sales and advertising
expenses of the plaintiffs' products under the brand 'TATA POWER
SOLAR' are given in paragraph 19 of the plaint. The sales turnover of the
plaintiffs' products sold under 'TATA POWER SOLAR' brand for the
financial year 2023-2024 amounts to Rs. 1907 crores (approx.) and the
advertising expenses for the same period amount to Rs. 23 crores.
9. Defendant no.1 is the registrant of the impostor domain name
'www.tatapowersolardealership.co.in' and the defendant no.2 is the
registrant of the impostor domain name 'www.tatapowersolars.com'.
Defendant no. 17 is the registrant of the impostor domain name
'www.tatapowersolars.org' and the defendant no. 18 is the registrant of the
impostor domain name 'www.tatapowersolarroof.com' (collectively referred
to as 'impugned domain names'). Defendant no.3 is Ashok Kumar/ John
Doe.
10. The defendant no. 4, Hosting Concepts B.V., is the Domain Name
Registrar for the impugned domain names of the defendant no. 1 and of the
defendant no. 2. The defendant no. 19, GoDaddy.com LLC, is the Domain
Name Registrar for the impugned domain name of the defendant no. 17. The
defendant no. 20, INWX GmbH & Co. KG, is the Domain Name Registrar
for the impugned domain name of the defendant no.18.
11. The defendants no. 5-14 are Telecom Service Providers (TSPs) and
Head Offices of Banks wherein the defendants no.1-2 and the defendants
no.17-18 (hereinafter 'imposter defendants') have their bank accounts. The
defendants no. 15 and 16 are the Department of Telecommunications
('DoT') and Ministry of Electronics and Information Technology
('MEITY') respectively.
12. Between February, 2024 to April, 2024, the plaintiffs were alerted
that the impostor defendants are duping many innocent persons. The
imposter defendants are infringing the trademark 'TATA' and 'TATA
SOLAR POWER' formative trademarks of the plaintiffs. The imposter
defendants are using the plaintiffs' marks as trade names, as part of their
domain name, email address ([email protected];
[email protected]; [email protected];
[email protected]; and [email protected],
[email protected]) etc.
13. It is the case of the plaintiffs that the imposter defendants are
contacting the prospective customers of the plaintiffs via calls through their
mobile numbers +91-9109840660 ; +91-7384040589 ; +91-7501191497 and
+91-9163594301, +91-7761081072; +91-7773055096 and +91-
8420553761, and messages through WhatsApp claiming themselves to be
employees of the plaintiff no.1 company and collecting various sums of
money as well as duping innocent customers under the promise of providing
services and/or dealerships of the plaintiffs.
14. Accordingly, the plaintiffs filed the present suit on 16th May, 2024
seeking to restrain the defendants from carrying on their infringing
activities.
PROCEEDINGS IN THE SUIT
15. On 20th May, 2024, while issuing summons in the suit, this Court
granted an ex-parte ad interim injunction in favour of the plaintiffs and
restrained the defendants no. 1 to 3 from using the marks 'TATA', 'TATA
POWER', 'TATA POWER SOLAROOF', , or any other
formative marks of the plaintiffs. Further, this Court issued directions to the
defendants no.4 to 16 in respect of the domain names/ mobile numbers/ bank
accounts of the defendants no. 1 to 3.
16. Subsequently, the plaintiffs' moved two fresh applications, i.e. I.A.
35874/2024 under Order XXXIX Rules 1 and 2 of the Code of Civil
Procedure, 1908 (hereinafter "CPC") as well as I.A. 35875/2024 under
Order I Rule 10 (2) of CPC. Vide order dated 8th August, 2024, the
plaintiffs' impleadment application being I.A. 35875/2024 was allowed and
the defendants no.17-20 were impleaded as defendants in the present suit.
17. Vide order dated 21st August, 2024, the Joint Registrar noted that the
defendants no.1 to 3 were duly served through email on 16th July, 2024.
Despite this, the defendants no.1 to 3 did not enter appearance and no
written statement(s) were filed on behalf of the defendants no.1 to 3.
18. Vide order dated 12th September, 2024, the plaintiffs' I.A. 39284/2024
under Order VI Rule 17 of CPC for amendment of plaint was allowed. On
the same date, ex-parte ad interim injunction was granted in favour of the
plaintiffs and the newly impleaded defendants no. 17-18 were restrained
from using the marks 'TATA', 'TATA POWER', 'TATA POWER
SOLAROOF', , or any other formative marks of the
plaintiffs. Further, this Court issued directions to the defendants no.19-20 in
respect of the domain names/ email address of the defendants no.17-18.
19. This Court vide order dated 19th September, 2024 modified the ex-
parte ad interim injunction order dated 12th September, 2024.
20. Vide order dated 24th October, 2024, notice was issued in I.A.
41465/2024 under Order XIII-A of the Commercial Courts Act, 2015 for
summary judgment.
21. The Joint Registrar recorded in the order dated 6th December, 2024
that the defendants no.17-18 had been served through email on 29th October
2024. Further, the right of the defendants no.1 to 3 to file written
statement(s) was closed.
22. Despite service, neither the defendants no.1-3 and 17-18 entered
appearance nor did they file a written statement.
23. Counsel for the plaintiffs submits that this is a fit case where a
summary judgment in terms of Order XIII-A of the Code of Civil Procedure,
1908 (CPC) as applicable to commercial disputes of a specified value, read
with Rule 27 of the Delhi High Court Intellectual Property Rights Division
Rules, 2022, deserves to be passed in favour of the plaintiffs and against the
defendants.
ANALYSIS AND FINDINGS
24. I have heard the submissions of the counsel for the plaintiffs and
perused the material on record.
25. The plaint has been duly verified and is also supported by the affidavit
of the plaintiffs. In view of the fact that no written statement has been filed
on behalf of the defendants no.1-3 and 17-18, all the averments made in the
plaint have to be taken to be admitted. Further, since no affidavit of
admission/denial has been filed on behalf of the defendants no.1-3 and 17-
18 in respect of the documents filed with the plaint, in terms of Rule 3 of the
Delhi High Court (Original Side) Rules 2018, the same are deemed to have
been admitted.
26. Therefore, I am of the opinion that no purpose would be served by
directing the plaintiffs to lead ex parte evidence by filing an affidavit of
examination in chief and the plaintiffs are entitled to a summary judgment.
27. From the averments made in the plaint and the evidence on record, the
plaintiffs have been able to prove that the plaintiffs are the registered
proprietor of the mark 'TATA' and 'TATA POWER SOLAR' formative
marks.
28. A bare perusal of the impugned domain names and email addresses
used by the defendants no.1-3 and 17-18 makes it apparent that the said
defendants have slavishly copied the plaintiffs' registered and well-reputed
trademark 'TATA' and 'TATA POWER SOLAR' formative marks and the
products of the said defendants bearing the impugned marks are being used
for identical services, i.e. solar energy solutions.
29. Based on the discussion above, a clear case of infringement of
trademarks is made out. The plaintiffs, through their annual turnover and
promotional expenses, have also been able to show their goodwill and
reputation in respect of the aforesaid trademarks among the members of the
trade and public. The defendants no.1-3 and 17-18 have taken unfair
advantage of the reputation and goodwill of the plaintiffs' trademarks and
have also deceived the unwary consumers of their association with the
plaintiffs by dishonestly adopting the plaintiffs' registered marks without
any plausible explanation. Therefore, the plaintiffs have established a case
of passing off as well.
30. At this stage, it may be relevant to note that the defendants no.1-3 and
17-18 did not appear before the Court, despite service of summons. Further,
no communication on behalf of the defendants no.1-3 and 17-18 have been
placed on record in respect of the allegations of the plaintiffs in this suit.
31. Since the defendants no.1-3 and 17-18 have failed to take any
requisite steps to contest the present suit, despite having suffered an ad
interim injunction order, it is evident that the defendants no.1-3 and 17-18
have no defence to put forth on merits.
32. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC
OnLine Del 10764, this Court has observed as under:
"90. To reiterate, the intent behind incorporating the summary
judgment procedure in the Commercial Court Act, 2015 is to ensure
disposal of commercial disputes in a time-bound manner. In fact, the
applicability of Order XIIIA, CPC to commercial disputes,
demonstrates that the trial is no longer the default procedure/norm.
91. Rule 3 of Order XIIIA, CPC, as applicable to commercial disputes,
empowers the Court to grant a summary judgement against the
defendant where the Court considers that the defendant has no real
prospects of successfully defending the claim and there is no other
compelling reason why the claim should not be disposed of before
recording of oral evidence. The expression "real" directs the Court to
examine whether there is a "realistic" as opposed to "fanciful"
prospects of success. This Court is of the view that the expression "no
genuine issue requiring a trial" in Ontario Rules of Civil Procedure
and "no other compelling reason.....for trial" in Commercial Courts
Act can be read mutatis mutandis. Consequently, Order XIIIA, CPC
would be attracted if the Court, while hearing such an application, can
make the necessary finding of fact, apply the law to the facts and the
same is a proportionate, more expeditious and less expensive means of
achieving a fair and just result.
92. Accordingly, unlike ordinary suits, Courts need not hold trial in
commercial suits, even if there are disputed questions of fact as held by
the Canadian Supreme Court in Robert Hryniak (supra), in the event,
the Court comes to the conclusion that the defendant lacks a real
prospect of successfully defending the claim."
33. The aforesaid principles are fully applicable in the facts and
circumstances of the present case. As elaborated above, the defendants no.1-
3 and 17-18 have no real prospect of successfully defending the claims in
the present suit. Further, taking into account that the defendants no.1-3 and
17-18 have not set up any defence, there is no compelling reason for the
recording of oral evidence.
34. Therefore, this is a fit case where a summary judgment in terms of
Order XIII-A of CPC can be passed in favour of the plaintiffs and against
the defendants no.1-3 and 17-18.
RELIEF
35. In view of the foregoing analysis, a decree of permanent injunction is
passed in favour of the plaintiffs and against the defendants no.1-3 and 17-
18 in terms of prayer clauses 32 (a) and 32 (b) of the amended plaint.
36. The decree is passed in favour of the plaintiffs and against the
defendant no. 20, directing it to suspend the domain name
'www.tatapowersolarroof.com'.
37. The defendants no.4 and 19 submit that they have complied with the
directions of the Court and have suspended the domain names
'www.tatapowersolardealership.co.in', 'www.tatapowersolars.com' and
'www.tatapowersolars.org' respectively.
37.1. In view thereof, the reliefs sought against the aforesaid defendants
stand satisfied.
38. Similarly, reliefs claimed under clauses 32 (d) and 32 (f) stand
satisfied as per orders dated 20th May, 2024 and 19th September, 2024.
39. Insofar as prayer clause 32 (e) is concerned, the defendants no. 6 to
14/ Banks are directed to freeze all the bank accounts mentioned below:
ACCOUNT NUMBER RESPECTIVE BANKS
400519210000006 Bank of India (D6)
110161081084 Canara Bank (D7)
110177058203 Canara Bank (D7)
110182430078 Canara Bank (D7)
5540938159 Central Bank of India (D8)
219401000007090 Indian Overseas Bank (D9)
18290100048682 Federal Bank of India (D10)
0569000100543045 Punjab National Bank (D11)
5866000100059983 Punjab National Bank (D11)
219401000007090 Indian Overseas Bank (D9)
60483735630 Bank of Maharashtra (D12)
60484882211 Bank of Maharashtra (D12)
41394259006 State Bank of India (D13)
23563211005858 UCO Bank (D14)
40. After freezing the said bank accounts, the defendants no. 6 to 14 are
directed to transfer the funds in the aforesaid bank accounts to Reserve Bank
of India's Depositor and Education Awareness Fund, within four (4) weeks
from today.
41. Let an affidavit of compliance be filed on behalf of the defendants no.
6 to 14/ Banks, within six (6) weeks from today.
42. The counsel for the plaintiffs does not press for the remaining reliefs
prayed for in the suit.
43. Let the decree sheet be drawn up accordingly.
44. The pending applications stand disposed of.
AMIT BANSAL, J
FEBRUARY 13, 2025
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