CS (OS) 1105/2008 Page 1 $~6 * IN THE HIGH COURT OF DELHI AT NEW DELHI DECIDED ON: 04.02.2010 + CS (OS) 1105/2008, I.A. Nos.6983/2008, 6984/2008 & 12039/2009 TATA SONS LIMITED & ANR ..... Plaintiffs Through: Mr. Pravin Anand with Mr. Achuthan Sreekumar, Advocates. versus RAMA NERUSU & ORS ..... Defendants Through: None. CORAM: MR. JUSTICE S. RAVINDRA BHAT 1. Whether the Reporters of local papers YES may be allowed to see the judgment? 2. To be referred to Reporter or not? YES 3. Whether the judgment should be YES reported in the Digest? MR. JUSTICE S.RAVINDRA BHAT (OPEN COURT) % The plaintiffs in the present suit for permanent injunction and other consequential reliefs such as damages, rendition of accounts, delivery up etc. complain of infringement of the registered trademarks “TATA” & “TISCO”, by the defendants. They also seek decree for permanent injunction to restrain the defendants from using the domain name www.tiscousa.com. 2. The suit contends that the first plaintiff was established in 1917 and is a principal investment holding company of the TATA Group of companies with a turnover of Rs.251543 crores as on 2007-2008. The certificate of incorporation of the first plaintiff has been produced CS (OS) 1105/2008 Page 2 as Ex.PW-1/2. It is stated that the TATA Group is ranked at the 6th position in the list of world‟s 50 most innovative companies by a finance weekly, for the year 2008 and that the TATA brand has been ranked at the 57th position among the top 100 brands worldwide by Brand Finance. The plaintiffs rely on Ex.PW-1/3, PW-1/11, PW-1/12, PW-1/13, PW-1/15 and PW-1/16 as well as the certain orders of this Court to assert that its trademarks can be classified as “well known marks”, within the meaning of Section 2 (i) (zg) of the Trademarks Act, 1999 (hereafter referred to as “the Act”). The plaintiff No.1‟s website is “TATA.COM”; the same is supported by the documentary evidence in the form of PW-1/3. The second plaintiff (hereafter referred to as TISCO) is a part of the TATA Group, was incorporated in 1907 and is a large steel company with an existing annual crude steel capacity of 28 million tonnes, it claims to be sixth largest steel producing company in the world. The suit lists commendations and laudatory references in respect of TISCO and several awards received by it for the excellence of its products and services. The plaintiffs rely on several documents in this regard, i.e. Ex.PW-1/5 - Ex.PW-1/10. It is stated that the second plaintiff also has business activities within the jurisdiction of this Court. 3. The plaintiffs contend that since inception in the year 1917, the companies within the TATA banner, used the rare patronymic name possessing the distinctiveness to be an invented word. The group companies are known as “House of TATAs” or “TATA GROUP”. 4. It is alleged that TISCO learnt, in May, 2008 about the defendants‟ activities and that the latter were operating their business under the name “TISCO” and domain name www.tiscousa.com. The print outs of the said website have been produced in the list of documents and exhibited as Ex.PW-2/5. It is alleged that the TATA‟s distinctive trademark with a prominent stylized „T‟ in a circle device has also been exhibited prominently in the defendants‟ CS (OS) 1105/2008 Page 3 website. In support, the plaintiffs have produced a copy of the website as Ex.PW-2/6. It is stated that the use of the TATA mark and distinctive device with a „T‟ in a circle is a blatant attempt to appropriate the plaintiffs‟ mark and a clear instance of infringement. 5. The defendants were served and had initially appeared in the proceedings. Later due to their non-representation, they were set down ex parte by order dated 10.12.2008. The plaintiffs were directed to lead ex parte evidence. Accordingly, the plaintiffs filed the affidavit evidence of Mr. V. Gurumurthy, constituted attorney of the first plaintiff and the affidavit of Mr. D.C. Sharma, Chief Investigator engaged by the plaintiff. PW-1 marked the documents as exhibits. Both the witnesses deposed in favour of the suit averments. 6. The Court has considered the submissions. The defendants have, despite service, not cared to contradict the suit allegations. 7. The website - copies of the photographs whereof have been produced by the plaintiffs, clearly depicts the distinctive and stylized „T‟ within an oval device; the defendants also used the word mark TISCO. In the „Contact Us‟ drop box, which is part of the defendants‟ website, the representation made clearly is that the so called „TISCO Group‟ has its office in Hyderabad. A comparison of the plaintiffs‟ mark, i.e. the registered device TATA in Ex.PW-1/3 with the defendants‟ mark clearly shows that the latter is identical to the former and is in fact a slavish imitation. Furthermore, the word TATA has also been copied. In these circumstances, the Court is satisfied that the use of the TATA word mark as well as the device, amounts to clear infringement in terms of Section 29 (1) and (2) as well as Section 29 (5) of the Act. This entitles the plaintiffs for the relief of permanent injunction, as sought so far as injunction in respect of the use of the said trade mark, as well as the domain name. 8. As far as the reliefs of delivery up, rendition of accounts and damages are concerned, CS (OS) 1105/2008 Page 4 there is no empirical evidence to show the degree of harm which has resulted by the defendants‟ use of the impugned mark. Nevertheless, the Court cannot be unmindful of the propensity of such use leading to confusion especially in the present information technology driven market place. In these circumstances, even while, not granting the damages, the Court is of the opinion that the plaintiffs would be entitled to substantial costs. 9. In view of the above discussion, the Suit is decreed in terms of paragraphs-28 (a), (b) & (c) with costs quantified @ Rs.1,00,000/- (Rs. One lakh). 10. Let a decree in these terms be drawn. 11. All the pending applications are also disposed of. S. RAVINDRA BHAT (JUDGE) FEBRUARY 04, 2010 /vd/