Delhi High Court - Orders
Tata Sons Private Limited vs M/S Tata Restart & Anr on 4 April, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~34
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 280/2024
TATA SONS PRIVATE LIMITED ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Achuthan
Sreekumar and Mr. Rohil Bansal,
Advocates.
versus
M/S TATA RESTART & ANR. ..... Defendants
Through: Ms. Mrinal Ojha, Mr. Debarshi Datta
and Ms. Tanya Chaudhry, Advocates
for D-2.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 04.04.2024 I.A. 7551/2024(seeking exemption from pre-litigation mediation)
1. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
2. Disposed of.
I.A. 7549/2024(seeking leave to file additional documents)
3. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
4. Applicant, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
CS(COMM) 280/2024 Page 1 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:14
5. Disposed of.
I.A. 7550/2024(seeking exemption from filing originals, clearer copies, certified copies of original, translated copies and left side margins)
6. Exemption is granted, subject to all just exceptions.
7. Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
8. Disposed of.
I.A. 7552/2024(seeking extension of time from filing court fee and one-time process)
9. For the grounds and reasons stated therein, the application is allowed. Plaintiff is granted two weeks' time to file deficient court fees.
10. Disposed of.
CS(COMM) 280/2024
11. Let the plaint be registered as a suit.
12. Issue summons. Ms. Mrinal Ojha, Advocate, accepts summons on behalf of Defendant No. 2. She confirms the receipt of paper book and waives the right of formal service of summons. Written statement be filed within thirty days commencing today.
13. Upon filing of process fee, issue summons to Defendant No. 1 by all permissible modes. Summons shall state that the written statement shall be filed by Defendant No.1 within 30 days from the date of receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/denial of the documents of Plaintiff, without which the written statements shall not be taken on record.
12023 SCC OnLine SC 1382.
CS(COMM) 280/2024 Page 2 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:14
14. Liberty is given to Plaintiff to file a replication(s) within 15 days of the receipt of the written statements. Along with the replication(s), if any, filed by Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by Plaintiff, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
15. List before the Joint Registrar for marking of exhibits on 08th July, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
16. List before Court for framing of issues thereafter. I.A. 7548/2024(u/O XXXIX Rules 1 and 2 of CPC)
17. Although there is no application to this effect, at the oral request of Mr. Pravin Anand, counsel for Plaintiff, given the nature of the relief sought and the peculiar facts and circumstances of the case, Plaintiff is exempted from effecting advance service on Defendant No.1.
18. Mr. Anand sets the Plaintiff's case in the following manner:
18.1 Plaintiff, Tata Sons Private limited, has filed the present suit in respect of its registered wordmark "TATA" and its formative versions, seeking inter-alia permanent injunction restraining Defendant No.1 from using the marks "TATA" "TATA RESTART" " on the grounds of infringement and passing off.
18.2. The Plaintiff was established in the year 1917 as a body corporate.
Plaintiff is the promoter and principal investment holding company of various TATA companies which are engaged in business of a wide-range of CS(COMM) 280/2024 Page 3 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:15 products and services including financial services. Furthermore, two-thirds of the equity share capital of the Plaintiff is held by philanthropic trusts which have created national institutions for science and technology, medical research, social studies and the performing arts. These trusts also provide aid and assistance to non-government organizations working in the areas of education, healthcare and livelihood.
18.3. The collective revenue of the TATA companies in 2022-2023 was about $150 billion (INR 12 trillion). The conglomeration of TATA Companies ("House of TATA"), was declared to be India's most valuable brand by 'Interbrand' in its list of 'Top 40 brands in India.' Plaintiff also has a functional website www.tata.com as well.
18.4 The trademark/tradename "TATA" which is derived from surname of Plaintiff's founder- Shri Jamsetji Nusserwanji Tata, possesses distinctiveness of an invented word. This trademark has been used continuously and consistently since its inception in the year 1917. On account of highly distinctive nature, trademark "TATA" has acquired stellar reputation from the very beginning and over the decades has acquired secondary meaning associating it exclusively to the conglomeration of Tata companies i.e., 'House of TATA.' The 'House of TATA' consists of over 100 companies which use the name/trademark 'TATA' as a key and essential part of their corporate name.
18.5. Plaintiff is the registered proprietor of the wordmark "TATA" in class 36 bearing registration no. 1236891. Plaintiff is also the proprietor of other formative versions of the trademark 'TATA' in Classes 36 (financial services, financial management etc) and 45 (Personal and social services rendered by others to meet the needs of individual), which are the relevant CS(COMM) 280/2024 Page 4 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:15 classes for the purposes of the instant suit. It is pertinent to mention here about Tata Consultancy Services, which is a subsidiary of the Plaintiff and is popularly known as 'TCS'. The said company's wordmark 'TCS' and " " has been registered in the Plaintiff's name, bearing registration no. 447151 and 5311280 and the mark "TCS" has been declared as a well- known trademark by the trademark registry. The said company carries on its business using the 'TCS' mark in a peculiar font style, i.e., . 18.6. Plaintiff is aggrieved by infringing activities of Defendant No. 1(M/s. Tata Restart'), who is running a ponzi financial/ investment scheme through its website www.tatarestart.com and is impersonating the Plaintiff and targeting unwary investors/members of the public by promising unrealistic returns. Godaddy.com LLC, Defendant No. 2, is the domain name registrar of domain name www.tatarestart.com. Identity and contact details of Defendant No. 1 have been masked in the WhoIs page in respect of registration of www.tatarestart.com. The illegal activities of Defendant No. 1's website and the domain name can be seen from screenshots which have been extracted in the following section of the order. The website www.tatarestart.com unauthorisedly uses Plaintiff's registered trademark "TATA" for their ponzi investment scheme. Furthermore, the website also bears the infringing mark " "giving an impression to the general public that the services rendered through the website are originating from Plaintiff/ TATA Group. 18.7. The Plaintiff was alerted about the fraudulent website by one Mr. CS(COMM) 280/2024 Page 5 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:16 Sudhir Sethi, who is the founder and Chairman of M/s Chiratae Ventures sometime in early 2024. He informed the Plaintiff about the article titled "Fraud Alert: Tata Restart, a Ponzi, Collective Investment Scam misusing the Tata Name", that was published by an online financial news platform called www.moneylife.in. Defendant No.1's website fraudulently claimed that Mr. Sudhir Sethi was the founding Chairman and Managing Director of TATA Restart investment plan. The said website fraudulently uses Plaintiff's trademark and the image of former chairman of the Plaintiff- Mr. Ratan Tata to show an association with Plaintiff and its group of companies. Owing to Mr. Sethi's intervention, images and names with references to Mr. Ratan Tata were taken down. However, the impugned website continues to make false claims, which is evident from following screenshots:
CS(COMM) 280/2024 Page 6 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:16 CS(COMM) 280/2024 Page 7 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:16 CS(COMM) 280/2024 Page 8 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:17 18.8. When the Plaintiff conducted a quick online search for the Defendant No.1's website, they realised that in order to attract more customers to their ponzi scheme, the website was also playing an emotional public good card by claiming to be empowering children by reconnecting them to education and towards such end, were asking people to support 'Tata Restart Support Centres' to give India's children a chance to chase their dreams. 18.9. That apart in order to make their claims look credible and to show their association with Plaintiff, the Defendant No.1's website even fraudulently uses and mentions the mark ' ' which is identical and CS(COMM) 280/2024 Page 9 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:17 deceptively similar to the Plaintiff's well known and registered mark "TCS". The said mark is used by the Plaintiff's subsidiary in with a specialised font-
' .' The said mark ' ' has been used on a virtual certificate titled 'THE LEADERS AWARD 2023' on the fraudulent and infringing website at www.tatarestart.com. This has been intentionally done to lure unwary customers to invest in their ponzi investment scheme. A screenshot of the said virtual certificate titled 'THE LEADERS AWARD 2023' is extracted herein below:
18.10. By using the Plaintiff's corporate name and mark "TATA", Defendant No.1 is impersonating as Plaintiff and using the consumers and general public to invest their hard-earned money in fake, fraudulent, ponzi financial investment scheme run through www.tatarestart.com. Therefore, the Plaintiff had issued a takedown notice to Defendant No. 2 who is the domain name registrar of the Defendant No.1's website, but they have refused to do so.CS(COMM) 280/2024 Page 10 of 12
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:17
19. The Court, in view of the above submissions and the documents placed on record is satisfied that a prima facie case has been established demonstrating blatant infringement of Plaintiff's trademark "TATA". Such use of Plaintiff's trademark on the website, as depicted in photographs above, is bound to cause consumer confusion and association with Plaintiff as Defendant No.1 has wholly incorporated the Plaintiff's registered mark "TATA" in its website domain www.tatarestart.com, and marks "TATA RESTART" and " " ("Impugned marks"). Defendant No.1's website domain name and Impugned marks are deceptively similar to the Plaintiff's registered mark "TATA" and website www.tata.com making the Defendant No.1's adoption of its domain name and Impugned marks ex- facie dishonest. Mr. Anand has thus been able to demonstrate that acts of Defendant No.1 amount to trademark infringement and passing off.
20. In view of the above, the Court finds that Plaintiff has made out a prima facie case in its favour and in case no ex-parte ad-interim injunction is granted Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against Defendant No.1. Directions
21. Till the next date of hearing, Defendant No.1 or anyone acting on their behalf, are restrained from directly or indirectly using the marks "TATA" or "TATA RESTART" or the mark " " or any other mark deceptively similar to Plaintiff's registered marks, CS(COMM) 280/2024 Page 11 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:18 amounting to infringement and passing off.
22. Defendant No.1 is directed to immediately take down the website parked on the domain www.tatarestart.com;
23. Defendant No.2, the domain name registrar, is directed to block/ suspend domain name 'www.tatarestart.com'.
24. Issue notice. Ms. Mrinal Ojha, counsel for Defendant No. 2, accepts notice.
25. Defendant No. 2 is directed to file KYC details of registrant in a sealed cover before this Court.
26. Upon filing of process fee, issue notice to Defendant No. 1, by all permissible modes, returnable on the next date of hearing.
27. Compliance of Order XXXIX Rule 3 of CPC be done with one week from today.
28. List before the Court on 9th September, 2024.
SANJEEV NARULA, J APRIL 4, 2024 d.negi CS(COMM) 280/2024 Page 12 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/04/2024 at 22:23:18