Madras High Court
M/S.Matrimony.Com Limited vs Silicon Valley Infomedia Private ... on 6 October, 2021
C.S.No.223 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 06.10.2021
CORAM
THE HONOURABLE DR.JUSTICE G.JAYACHANDRAN
C.S(Comm.Div.).No.223 of 2019
M/s.Matrimony.com Limited,
No.94, TVH Beliciaa Towers,
Tower-2, 10th Floor,
MRC Nagar, Mandaveli,
Chennai-600 028.
Rep.by its General Manager-Legal & Regulatory,
Mr.S.Ravichandran ... Plaintiff
Vs.
Silicon Valley Infomedia Private Limited,
321, Patel Avenue, Opp. Grand Bagawati,
S.G.Road,
Ahmedabad-380 059. ... Defendant
Prayer: The Civil Suit has been filed under Order IV Rule 1 of the Original
Side Rules read with Order VII Rule 1 of C.P.C, and Sections 27, 28, 29,
134 & 135 of Trade Marks Act 1999 and Section 7 of the Commercial
Courts, Commercial Division and Commercial Appellate Division of High
Courts Act No.4 of 2016, praying for
(a). A permanent injunction restraining the defendant, by
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themselves, their directors, partners, men, servants, agents, broadcasters,
representatives, advertisers, franchisees, licensees and / or all other persons
acting on their behalf from in any manner infringing and / or enabling others
to infringe plaintiff's registered trademarks BHARATMATRIMONY and / or
its variants by using the identical trademark BHARATMATRIMONY as part
of the Domain name or in any other manner whatsoever;
(b). A permanent injunction restraining the defendant, by
themselves, their directors, partners, men, servants, agents, broadcasters,
representatives, advertisers, franchisees, licensees and / or all other persons
acting on their behalf from in any manner diverting the plaintiff's business to
themselves by using Google's search engine in which the plaintiff's
trademark BHARATMATRIONY and domain name
BHARATMATRIONY.ORG and / or its variants, by using as domain name
and / or as meta tags and thereby passing off the business and services of the
defendant as that of the plaintiff or in any other manner whatsoever;
(c). A permanent injunction restraining the defendant, themselves,
their partners, successors-in-business, servants, agents, representatives,
assigns and all other persons claiming under them and through them from
using or redirecting to the domain name www.bharatmatrimony.org or any
other domain name that is identical and / or deceptively similar to that of the
plaintiff's domain name www.bharatmatrimony.com in any manner
whatsoever;
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(d). The defendant be directed to surrender to the plaintiff for
destruction all compact discs, master copy, advertising materials, pamphlets,
brochures, etc. which bears the plaintiff's registered trademarks and / or any
other variants which is phonetically and / or deceptively identical and / or
similar to the plaintiff's registered trademarks or in any other form
whatsoever;
(e). Award damages of Rs.10,00,000/- for infringing and / or for
passing off and / or for enabling others to infringe and / or pass off the
plaintiff's trademarks and domain names;
(f) A preliminary decree be passed in favour of the plaintiff
directing the defendant to render account of profits made by use of
trademark BHARATMATRIMONY and final decree be passed in favour of
the plaintiff for the amount of profits thus found to have been made by the
defendant, after the latter have rendered accounts;
(g) For costs of the suit.
For Plaintiff : Mr.Arun C.Mohan
For Defendant : No appearance
JUDGMENT
(Case has been heard through video conference)
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The suit is filed for injunction restraining the defendant, men and
agent from infringing the plaintiff's registered trademark
BHARATMATRIMONY and its variant.
2. The sum and substance of the plaint is that, the plaintiff's
company incorporated under the Companies Act, having its registered office
at Chennai, is a pioneer in using the Internet as a platform for matrimonial
alliance. They are in the business since 2001.
3. Being the leading matrimony portal, the plaintiff enjoys
tremendous goodwill through out India and abroad. The plaintiff's Internet
business started in the year 1997, having its domain name as
www.bharatmatrimony.com. As the business growing, the plaintiff had
registered several other domain names based on language and religion to
cater the needs of the regional customer. While so, in order to protect the
mark and enjoy exclusively, the plaintiff has registered the domain name
www.bharatmatrimony.com as early as on 27.12.1999. The said registration
is valid and subsisting till date. In order to take advantage of the reputation
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and wide acceptance by the public, the defendant herein had adopted the
identical mark of the plaintiff for its online business. The said adoption
www.bharatmatrimony.org with intention to ride its goodwill and reputation.
The said adoption is not honest, but with malafide intention to cause
deception and confusion to the users in order to gain illicit benefit. When the
plaintiff came to know this unauthorized use and wrongful exploitation the
name used for the plaintiff's trademark by the defendant, notice dated
15.06.2018 was served on the defendant to cease and deceit from adopting
the mark which is identical that of the plaintiff's trademark
BHARATMATRIMONY. Since the defendant has failed to restrain itself
from deceptively, illegally adopting the plaintiff's trademark, the present suit
is filed for the following relief:-
(a). A permanent injunction restraining the defendant, by
themselves, their directors, partners, men, servants, agents, broadcasters,
representatives, advertisers, franchisees, licensees and / or all other persons
acting on their behalf from in any manner infringing and / or enabling others
to infringe plaintiff's registered trademarks BHARATMATRIMONY and / or
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C.S.No.223 of 2019
its variants by using the identical trademark BHARATMATRIMONY as part
of the Domain name or in any other manner whatsoever;
(b). A permanent injunction restraining the defendant, by
themselves, their directors, partners, men, servants, agents, broadcasters,
representatives, advertisers, franchisees, licensees and / or all other persons
acting on their behalf from in any manner diverting the plaintiff's business to
themselves by using Google's search engine in which the plaintiff's
trademark BHARATMATRIONY and domain name
BHARATMATRIONY.ORG and / or its variants, by using as domain name
and / or as meta tags and thereby passing off the business and services of the
defendant as that of the plaintiff or in any other manner whatsoever;
(c). A permanent injunction restraining the defendant, themselves,
their partners, successors-in-business, servants, agents, representatives,
assigns and all other persons claiming under them and through them from
using or redirecting to the domain name www.bharatmatrimony.org or any
other domain name that is identical and / or deceptively similar to that of the
plaintiff's domain name www.bharatmatrimony.com in any manner
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C.S.No.223 of 2019
whatsoever;
(d). The defendant be directed to surrender to the plaintiff for
destruction all compact discs, master copy, advertising materials, pamphlets,
brochures, etc. which bears the plaintiff's registered trademarks and / or any
other variants which is phonetically and / or deceptively identical and / or
similar to the plaintiff's registered trademarks or in any other form
whatsoever.
4. From the Registry record, this Court finds that on 28.03.2018,
the interim injunction was granted being prima facie satisfied about the
alleged infringement of copyright by the respondent/defendant. Thereafter,
the interim order was extended from time to time. Service on the defendant
was effected on 14.05.2019. Sufficient time was granted to the defendant to
file written statement, however, the defendant failed to file his written
statement within the time line prescribed under the provisions of the
Commercial Courts Act. Hence, on 09.01.2020, the right of the defendant to
file written statement got forfeited. The interim order granted on 28.03.2019
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was made absolute. The plaintiff was directed to marshal his witness before
the Additional Master IV for recording the evidence. Accordingly,
Mr.S.Ravichandran working as a Associate vice President, Legal &
Regulatory of the plaintiff at Chennai, has filed in lieu of chief examination
and mounted the witness box, through him, 25 exhibits were marked.
5. According to the learned counsel for the plaintiff, the plaintiff is
in the business of matrimonial alliance through online since 1997, in the
name and style of www.bharatmatrimony.com, would submit that the word
mark BHARATMATRIMONY was registered on 02.02.2005 with the
trademark Registry and certificate was issued on 14.10.2006 which is
marked as Ex.P3. The said word mark registration is in respect of class 16
for use in relation to matrimony services etc. Likewise, the plaintiff got
registration in class 99 for the word matrimony on 12.04.2007 for the
following services, legal user certificate issued by the trademark is marked
as Ex.P4.
“42.Marriage bureaux, horoscope
matching and other matrimonial services, services
to facilitate on-line marriages, verification services,
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profile references, match making services,
astrology, wedding directory, matrimony tool bar.
35.Commercial information agency,
complete yellow pages portal, information
directory, database listing, event listing, all relating
to matrimonial services.”
The plaintiff created the domain name www.bharatmatrimony.com on
27.12.1999 and two other sites. The print out of web page extract of
www.bharatmatrimny.org is marked as Ex.P.22.
6. The learned counsel for the plaintiff after referring these
documents submitted that any person intend to search
BHARATMATRIMONY invariably made open the domain
www.bharatmatrimony.org, which is ported by the defendant and Ex.P.23-
the screen shot of the defendant's company www.siliconinfo.com using the
domain name www.bharatmatrimony.org will prove the adoption of the
identical mark by the defendant for their domain name.
7. This Court, on perusing Ex.P.23 satisfies that the user name
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BHARATMATRIMONY, which has been used by the plaintiff since 1997
and the domain name www.bharatmatrimony.com since 1999 has been
dishonestly adopted by the defendant for its domain name, while its trade
name is www.siliconinfo.com. When the defendant was served cease and
deceit notice through e-mail dated 25.06.2018, it appears that the defendant
has not responded to justify the adoption of the domain name
www.bharatmatrimony.com. Even after institution of the suit and receipt of
the suit summons, though the defendant has entered appearance through the
learned counsel viz., J.Pachaiyappan and Santha Laxmi, they have not
chosen to file any written statement or cross examination of the plaintiff's
witness to press the suit end. The defendant accepts Ex.P.3, Ex.P.4, Ex.P.22
and Ex.P.23 are the documents, which establish that the plaintiff is the prior
user of the mark BHARATMATRIMONY, have valid registration for the
same and for the very same service.
8. The defendant has adopted the domain name
www.bharatmatrimony.org, which is squarely prohibited under Section 29 of
the Trademark Act as infringement. Under Section 29(3), if the identical
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mark used for identical service, the Court shall presume the infringement.
Here it is a case where the identical mark for identical service is adopted by
the defendant and no justification has come forward from the defendant,
despite affording opportunity. Therefore, the suit is allowed in respect of the
injunction relief sought against infringement. As far as the relief sought for
damages, the evidence let in by the PW.1 does not disclose element of
specific damages except fact open for inference.
9. In such circumstances, this Court is of the view that the plaintiff
is entitled for the relief (a), (b), (c) and (d) alone. For want of evidence,
particularly, there is no evidence to indicate that the defendant has gain
profit, the relief sought under the prayer (e) and (f) are declined.
10. As a result, the suit is allowed with costs in respect of the
prayer (a), (b), (c) and (d). The relief sought under the prayer (e) and (f) are
declined.
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rpl
Index : Yes/No.
Internet :Yes/No.
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C.S.No.223 of 2019
DR.G.JAYACHANDRAN, J.
rpl
C.S(Comm.Div.).No.223 of 2019
06.10.2021
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