CS(OS)Nos.264/2008 & 232/2009 Page 1 of 37 THE HIGH COURT OF DELHI AT NEW DELHI % Judgment Reserved on: 23.3.2011. Judgment Pronounced on: 28.3.2011. + CS(OS) No. 264/2008 TATA SONS LTD. ..…Plaintiff - versus - MANOJ DODIA & ORS. .....Defendant AND CS(OS) No. 232/2009 TATA SONS LTD. ..…Plaintiff - versus - MR. MD. JAWED & ANR. .....Defendants Advocates who appeared in this case: For the Plaintiff: Mr. Pravin Anand and Mr. Reuben Cheriyan. For the Defendants: None. CORAM:- HON’BLE MR JUSTICE V.K. JAIN 1. Whether Reporters of local papers may be allowed to see the judgment? Yes 2. To be referred to the Reporter or not? Yes 3. Whether the judgment should be reported Yes in Digest? V.K. JAIN, J 1. These are suits filed by Tata Sons Ltd. for CS(OS)Nos.264/2008 & 232/2009 Page 2 of 37 permanent injunction, damages, rendition of accounts and delivery of the infringing materials. The plaintiff company, which was established in the year 1917, is the principal investment holding company of the Tata Group which had a turnover of Rs.96,000 crores for the year 2005-2006 and is stated to be one of India‟s most trusted business houses. The name TATA is stated to have been derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. For the year 2006, Tata Group was also ranked as 20th amongst world‟s most reputed companies. The name TATA is being used by the plaintiff company since its inception in the year 1917 and it is claimed that on account of its highly descriptive nature and pioneering activities of the founder, the name TATA has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata Group, which is known for high quality of products manufactured and/or services rendered by it under the trade mark/name TATA. The House of Tatas comprises of over 100 companies of which over 50 companies use TATA as a key and essential part of their corporate name. It is claimed that being proprietor of the trade mark TATA, the plaintiff company enjoys exclusive CS(OS)Nos.264/2008 & 232/2009 Page 3 of 37 rights in the aforesaid mark. The plaintiff company claims to be owner of various trademarks which contain the name TATA as a part of the registered trademark. It is alleged that on account of continuance and extensive use of the plaintiff‟s trade mark TATA over a long period of time spanning a wide geographical area, coupled with vast promotion and publicity, the said trademark enjoys an unparalleled reputation and goodwill and has acquired the status of a “well known” trademark. 2. The defendants in Suit No.264/2008 Mr.Manoj Dodia and Mr. Manish Dodia are stated to be co-owners of M/s. Durga Scale Co., which is engaged in the business of manufacturing and selling weighting scales and spring balances under the trade mark A-One TATA. It is claimed that use of the aforesaid mark by the defendants amounts to infringement of plaintiff‟s registered trade mark TATA, granted wide various registrations in class 9. It is further alleged that the impugned mark is inherently deceptive and constitutes a misrepresentation to unwary consumers that goods of the defendants are either of the plaintiff company or approved by it. Such misrepresentation, according to the plaintiff, will inevitably lead to confusion or deception in the CS(OS)Nos.264/2008 & 232/2009 Page 4 of 37 mind of the unsuspecting buyers and will result in the defendants poaching on the plaintiff‟s business, goodwill and reputation, thereby amounting to passing off. The plaintiff has accordingly sought an injunction restraining the defendants from manufacturing, selling, offering for sale, advertising, and directly or indirectly dealing in weighting scales and springing balances or goods of any description bearing the trademark A-ONE TATA or any other mark confusingly similar to trade mark TATA amounting to passing off the defendants‟ goods as that of the plaintiff‟s. It has also sought delivery up of all the goods bearing the impugned mark, dies, blocks, cartons, labels and any other infringing material, to the authorized representatives of the plaintiff, for the purposes of destruction. The plaintiff company has also sought damages amounting to Rs.20,05,000/- besides rendition of accounts in respect of the profits earned by them from use of the trademark A-One TATA. 3. CS(OS) No.232/2009 has been filed by Tata Sons Limited against Mohd. Jawed and TATA Points. Mr. Mohd. Jawed is stated to be working under the name and style of TATA Points. In this case, it is also alleged that the name CS(OS)Nos.264/2008 & 232/2009 Page 5 of 37 `TATA‟ either singularly or in conjunction with other names as well as TATA device have been registered in the name of the plaintiff Company in respect of different products in Class 12. It is also alleged that besides the trade mark `TATA‟, the plaintiff company is also the proprietor of the device which contains „T‟ in a circle (device). The defendant in this suit is alleged to be engaged in the business of selling spare parts for automobiles. It is also alleged that the visiting cards of the defendants bears the trade mark `TATA‟ as also the device, which contains „T‟ in a circle (device). 4. The defendants in both the suits are ex parte. In Suit No.264/2008 the plaintiff has filed the affidavit of Mr. V. Gurumoorthi, Constituted Attorney of plaintiff No.1, by way of evidence. In his affidavit Mr. Gurumoorthi has stated that plaintiff Tata group had a turnover of Rs.2,51,543/- Crores for the year 2007-08 and is one of the most trusted business houses in the Country. He has claimed that the name/trademark TATA is a household name, synonymous with excellence in almost every field of business activity and the enterprises promoted by Tata operate in various core sectors, including iron and CS(OS)Nos.264/2008 & 232/2009 Page 6 of 37 steel, textile power, chemicals, hotel, automobile, computer, telecommunications, financial services and mutual funds, etc. and the use of trademark and the name TATA by predecessors of the plaintiff dates back to 1868. According to him, house of Tatas consists of over 100 companies of which more than 50 companies use TATA as a key and essential part of their corporate names. He claims that the plaintiffs are proprietors of the trademark TATA on account of priority in adoption, long, continuous and extensive use and advertising and the reputation accruing thereto in the course of trade. He has stated that the plaintiffs and its group companies use TATA as a trademark so as to indicate that these companies have been promoted by the house of Tatas. Similar affidavit has been filed by Mr. V. Gurumoorthi in suit No.232/2009. 5. A well known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available CS(OS)Nos.264/2008 & 232/2009 Page 7 of 37 throughout the world, of goods and services during fairs/exhibitions, , more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trademark needs to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trademarks are encouraged to expand their business activities under those marks to other jurisdictions as well. The relevant general public in the case of a well known trademark would mean consumers, manufacturing and business circles and persons involved in the sale of the goods or service carrying such a trademark. 6. The doctrine of dilution, which has recently gained momentus, particularly in respect of well known trademarks emphasises that use of a well known mark even in respect of goods or services, which are not similar to those provided by the trademark owner, though it may not cause confusion CS(OS)Nos.264/2008 & 232/2009 Page 8 of 37 amongst the consumer as to the source of goods or services, may cause damage to the reputation which the well known trademark enjoys by reducing or diluting the trademark‟s power to indicate the source of goods or services. 7. Another reason for growing acceptance of trans- border reputation is that a person using a well known trademark even in respect of goods or services which are not similar tries to take unfair advantage of the trans-border reputation which that brand enjoys in the market and thereby tries to exploit and capitalize on the attraction and reputation which it enjoys amongst the consumers. When a person uses another person‟s well known trademark, he tries to take advantage of the goodwill that well known trademark enjoys and such an act constitutes an unfair competition. 8. The concept of confusion in the mind of consumer is critical in actions for trademark infringement and passing off, as well as in determining the registrability of the trademark but, not all use of identical/similar mark result in consumer confusion and, therefore, the traditionally principles of likelihood of confusion has been found to be inadequate to protect famous and well known marks. The CS(OS)Nos.264/2008 & 232/2009 Page 9 of 37 world is steadily moving towards stronger recognition and protection of well known marks. By doing away with the requirement of showing likelihood of confusion to the consumer, by implementing anti-dilution laws and recognizing trans-border or spill over reputation wherever the use of a mark likely to be detrimental to the distinctive character or reputation of an earlier well known mark. Dilution of a well known trademark occurs when a well known trademark loses its ability to be uniquely and distinctively identify and distinguish as one source and consequent change in perception which reduces the market value or selling power of the product bearing the well known mark. Dilution may also occur when the well known trademark is used in respect of goods or services of inferior quality. If a brand which is well known for the quality of the products sold or services rendered under that name or a mark similar to that mark is used in respect of the products which are not of the quality which the consumer expects in respect of the products sold and/or services provided using that mark, that may evoke uncharitable thoughts in the mind of the consumer about the trademark owner‟s product and he can no more be confident that the product being CS(OS)Nos.264/2008 & 232/2009 Page 10 of 37 sold or the service being rendered under that well known brand will prove to be of expected standard or quality. 9. Article 6bis of Paris Convention, 1967 enjoined upon the Countries of the Union, subject to their legislation so permitting or at the request of the interested parties, to refuse or to cancel the registration and to prohibit the use of trademark which constitutes a representation and imitation or translation liable to create confusion of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of Convention and used for identical or similar goods. This provision was also to apply when the essential part of the mark constituted a reproduction of any such well known mark or an imitation liable to create confusion therewith. The prohibition against use of a well known trademark, under Paris Convention, was, thus, to apply only when the impugned use was in respect of identical or similar goods. Vide Article 16 of TRIPS Agreement 1994, it was decided that Article 6bis of Paris Convention, 1967 shall apply mutatis mutandis to services as well as to goods or services, which are not similar to those in respect of which a CS(OS)Nos.264/2008 & 232/2009 Page 11 of 37 trademark is registered, provided that the use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and the interests of the owner of the registered trademark and are likely to be damaged by the impugned use. It was further decided that in determining whether the trademark is well known, the members shall take account of the knowledge of the trademark in relevant sectors of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark. Thus, the TRIPS Agreement, 1994 brought about a material change by prohibiting use which constitutes a representation or imitation and is likely to create confusion even if such use is in relation to altogether different goods or services, so long as the mark alleged to have been infringed by such use is a well known mark. This Article, thus, grants protection against dilution of a trademark, which may be detrimental to the reputation that the business carried under a well known trademark enjoys. 10. Well known marks and trans-border reputation of brands was recognized by Courts in India, even before Trade CS(OS)Nos.264/2008 & 232/2009 Page 12 of 37 Marks Act, 1999 came into force. In Daimler Benz. Akietgesellschaft v. Hybo Hindustan, AIR 1994 Del 239, the manufacturers of Mercedes Benz sought an injunction against the defendants who were using the famous „three pointed star in the circle‟ and the word „Benz‟. The Court granted injunction against the defendants who were using these marks for selling apparel. Similarly, in Whirlpool Co. & Another v. N.R. Dongre, (1996) PTC 415 (Del.), the plaintiff Whirlpool had not subsequently registered their trademark after the registration of the same in 1977. At the relevant time, the plaintiff had a worldwide reputation and used to sell their machines in the US embassy in India and also advertised in a number of international magazines having circulation in India. However, the defendant started using the mark on its washing machines. After an action was brought against them, the Court held that the plaintiff had an established „transborder reputation‟ in India and hence the defendants were injuncted from using the same for their products. In the Kamal trading Co. vs. Gillette UK Limited,(1998 IPLR 135), injunction was sought against the defendants who were using the mark 7'O Clock on their toothbrushes. This was further reaffirmed by the CS(OS)Nos.264/2008 & 232/2009 Page 13 of 37 Bombay High Court, which held that the plaintiff had acquired an extensive reputation in all over the world including India by using the mark 7'O Clock on razors, shaving creams. The use of an identical mark by the defendant would lead to the customer being deceived. 11. The Trade Marks Act, 1999 accords a statutory protection to well known marks, irrespective of whether they are Indian marks or foreign marks. Section 29(4) of Trade Marks Act, 1999, which is relevant in this regard, reads as under:- 29(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person. using by way of permitted use, uses in the course of trade, a mark which- (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. Section 11(6) which deals with determination of trademark as a well known marks, reads as under:- CS(OS)Nos.264/2008 & 232/2009 Page 14 of 37 11(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including - (i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark; (ii) the duration, extent and geographical area of any use of that trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; (iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. Sub-Section (7) of Section 11 of the Trademarks Act, 1999 specifies the factors which the Registrar has to take into account while determining whether a trademark is known to the relevant section of the public or not and reads CS(OS)Nos.264/2008 & 232/2009 Page 15 of 37 as under:- “(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account- (i) The number of actual or potential consumers of the goods or services; (ii) The number of persons involved in the channels of distribution of the goods or services; (iii) The business circles dealing with the goods or services, To which that trade mark applies.” Sub-section 9 of Section 11 circumscribes the power of Registrar while determining whether the trademark is a well known trademark and reads as under:- 11(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely: - (i) that the trade mark has been used in India; (ii) that the trade mark has been registered; (iii) that the application for registration of the trade mark has been filed in India; (iv) that the trade mark - CS(OS)Nos.264/2008 & 232/2009 Page 16 of 37 (a) is well known in; or (b) has been registered in; or (c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or (v) that the trade mark is well-known to the public at large in India. 12. The owner of a well known trademark may (i) seek cancellation or (ii) prevent registration of a trademark which is same or similar to the well known mark irrespective of whether the impugned mark is in relation to identical or similar goods or services or in relation to other categories of goods or services. He may also prevent others from incorporating the well known trademark as a part of their corporate name/business name. Even if a well known trademark is not registered in India, its owner may avail these rights in respect of the trademark registered/used or sought to be registered/used in India, provided that the well known mark is otherwise known to or recognized by the relevant section of public in India. The existence of actual confusion or a risk of confusion is, however, necessary for the protection of a well known trademark, as a result of infringement. CS(OS)Nos.264/2008 & 232/2009 Page 17 of 37 13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one CS(OS)Nos.264/2008 & 232/2009 Page 18 of 37 country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction. 14. It is difficult to dispute that as far as India is concerned, TATA is almost a household name. The house of TATAs is one of the oldest business houses in our country and the group has substantial presence in a large number of sectors. In Class 9 alone, the plaintiff company owns a large number trademark registrations of TATA (word mark), TATA (device) and TATA in combination with other words in respect of various products, vide registration/application Nos. 1191250, 109358, 92645, 569377, 569381, 585717, 585718, 6089, 1191270, 1191260, 1191230, 1191240, 1191280, 1135862 and 1135860. 15. In class 12, there are as many as 23 registration of the mark TATA (word mark), TATA (device) and TATA in conjunction with other words in respect of various products coming in that class. These are registrations/application Nos. 108623, 108624, 108625, 180058, 569378, 569382, 585377, 585376, 838428, 839729,1191263, 1191253, 1191273, 1191233, 1191243, 1191283, 1315215, 1315216, 1315217, 1501279, 1502954, 1533728 and 1536338 . The CS(OS)Nos.264/2008 & 232/2009 Page 19 of 37 additional affidavit filed by the plaintiff on 23rd March, 2011 shows that the word mark TATA alone has been registered in Class 1 to 16, 19, 20, 21, 22, 25, 26, 29 to 32 and 35 to 42 vide registration Nos. 92655, 92649, 131196, 569389, 6091, 92647, 585055, 92651, 92644, 362741, 450770, 362742, 569376, 585057, 558466, 92643, 585714, 6089, 92645, 569377, 585717, 1033579, 1033585, 1033588, 1033591, 1033597, 1033600, 1033603, 1033606, 585061, 585720, 299110, 92642, 562934, 838431, 839732, 585723, 585724, 585725, 752454, 1590660, 1033578, 1033581, 1033584, 1033590, 1033593, 1033596, 1033602, 1033605, 6090, 92646, 839737, 92652, 92652, 92648, 92653, 585066, 839739, 585383, 839743, 92652, 585728, 1033577, 1033580, 1033592, 1033595, 1033601, 1033604, 1033607, 907791, 92653, 569862, 585734, 1236890, 1236891, 1236892, 1236893, 1615092, 1615094, 1236894, 1236895, 1236896 and 1236897. The plaintiff company claims to be having agreements called TATA Brand Equity and Business Promotion Agreements with a large number of group companies whereby a particular code of conduct needs to be followed by those companies in all their dealings. TATA CS(OS)Nos.264/2008 & 232/2009 Page 20 of 37 group of companies includes a number of large companies such as TISCO, Tata Motors Ltd., Tata Metaliks Limited, Tata Cummins Ltd., Tata Tea Limited, Tata Housing Development Company Ltd., Tata Finance Limited, Tata AIG Risk Management Services Ltd., Tata Consultancy Services (TCS), Tata Teleservices, Tata Honeywell Limited and Tata Infotech Limited. 16. In CS(OS) No.1922/2003 decided on 14th September, 2004, this Court observed that the trademark TATA has become a household name not only in India but throughout the world and, therefore, is well known as contemplated in Section 11 (6) of Trademarks Act, 1999. Interim orders have been passed by this Court in a number of cases upholding the trademark TATA of the plaintiff company. In Tatara Tea Company. Peshawar v. TATA Sons Ltd. & Registrar of Trade Marks, Karachi, IPLR 2005 October 221, the High Court of Sindh upheld the order of Registrar of