Bombay High Court
Mahindra And Mahindra Ltd vs Anand Mahendra It Park And 3 Ors on 26 November, 2018
Author: S.J. Kathawalla
Bench: S.J. Kathawalla
ssp nmcdl 2800 of 2018.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
NOTICE OF MOTION (L) NO. 2800 OF 2018
IN
COMMERCIAL IP (L) NO. 1591 OF 2018
Mahindra & Mahindra Ltd. ... Plaintiff
versus
Anand Mahendra IT Park and Ors. ... Defendants
ALONG WITH
LEAVE PETITION NO.369 OF 2018
Mr. Virag Tulzapurkar, Senior Advocate with Mr. Adheesh Nargolkar, Ms. Smriti
Yadav, Mr. Dhiren Karania I/by Mr. Vishal S. Shriyan, for Plaintiff.
Defendants absent though served.
CORAM: S.J. KATHAWALLA, J.
DATE: 26th NOVEMBER, 2018 P.C.:
1. The Learned Senior Counsel for the Plaintiff states that the Defendants have been served with notice of this application and copies of the Plaint, Notice of Motion, affidavits and Petition for leave under Clause XIV of the Letters Patent in the above matter. An Affidavit of Service evincing the same shall be filed during the course of the day. None has appeared on behalf of the Defendants despite service.
Photocopies of the acknowledgements were produced in Court.
2. This is an action for infringement of the Plaintiff's registered trade marks and for passing off. The Learned Senior Counsel for the Plaintiff submits that Leave 1/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Petition under Clause XIV of the Letters Patent (Bombay) to combine the cause of action for passing off with the cause of action for infringement of trade mark has also been served upon the Defendants. In view thereof, the Leave under Clause XIV of the Letters Patent (Bombay) is granted. The above Leave Petition is accordingly disposed of.
3. According to the Plaintiff, it is among the top ten industrial houses in India and is highly reputed, established and a well-known business house having interest in a very wide range of businesses and activities. It is the Plaintiff's case that the Mahindra Group of Companies has a leading presence in over 20 key sectors of the Indian economy including but not limited to automotive, two wheelers, components, construction equipment, consulting services, aerospace, aftermarket, agribusiness, energy, power generation, farm equipment, steel, finance and insurance, industrial equipment, information technology, leisure and hospitality, logistics, real estate, retail etc. and is continuing to expand its scope of goods and services every day. With seven decades of manufacturing and trading experience, the Mahindra Group of Companies has built a strong base in technology, engineering, marketing and distribution which are a key to its evolution as a customer-centric organization. Over 70 years, the Mahindra Group of Companies has grown to a US $ 20.7 billion multinational group with more than 240,000 employees in over 100 countries across the globe and has several state-of-the-art facilities in India and overseas. The Mahindra Group also has a 2/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc leading presence in the global Information Technology (IT) industry, offering a full range of IT solutions and support through outstanding companies with special expertise. The IT division of the Mahindra Group comprising of Bristlecone Limited, Tech Mahindra Limited and Mahindra Comviva Limited are market leaders in designing industry-specific IT solutions to help their clients, ranging from business process outsourcing, IT consulting, supply chain consulting, infrastructure management, network technology solutions to R&D as well as security services. On the real estate front, that the Mahindra Group ventured in 1984 through its group company, Mahindra Lifespace Developers Limited, has been at the forefront of transforming urban landscapes by creating sustainable communities and is India's first 'Green Homes' developer. Besides residential space, Mahindra World City Developers Limited is engaged in the business of creating integrated business cities built in a work-live-learn-play format, catering to a wide range of industries.
4. It is the Plaintiff's case that in 1945, it was incorporated with the trading name "Mahindra & Mohammed Limited", which was changed to "Mahindra & Mahindra Limited" in 1948. The Plaintiff has carried on its business activities since about 1945 under the distinctive trade mark/trade name "Mahindra" / "Mahindra & Mahindra", ("said Trade Mark") used as part of its corporate name, trading style as well as a Trade Mark in respect of various products and services. In view of the varied businesses of Plaintiff, it has also secured statutory protection of the said Trade Mark 3/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc (word per se and label) across various classes under the Trade Marks Act, as amended from time to time. The Plaintiff has annexed a list containing the details of some of the registrations of the said Trade Mark in various classes in India at Exhibit A to the Plaint. Further, the Plaintiff has relied upon details of certain registrations of the said Trade Mark in Classes 7, 11, 12, 36, 37 and 42 in India in paragraph 4 of the Plaint and has annexed copies of the certified copy of the extracts from the Register of Trade Marks of the said Trade Mark bearing registration numbers 322911, 338997, 800558, 800564, 2327472 and 2454726 at Exhibit B-1 to B-6 and copies of the Registration Certificates, the Trade Marks Journal advertisement and latest status from the online records of the Trade Marks Registry in respect of the registration numbers 728304, 1460961, 2332514, 2404388, 2404390, 2454729, 2458230, 2466203, 2503036, 2454730, 2458231, 2469548, 2503037, 2493829, 2334884, 2454732, 2458233, 2470462 and 2503039 at Exhibit B-7 to B-25. The Plaintiff has also annexed a list containing the details of some of the registrations of the said Trade Mark in various classes in various countries world over at Exhibit C to the Plaint.
5. It is stated that the said Trade Mark is being continuously, extensively and un-interruptedly used by the Plaintiff since the time of its inception and in respect of the several business activities conducted by the Mahindra Group of Companies. It is stated that the goods sold, and services rendered and the business activities done under the said Trade Mark are promoted extensively in various media, for which the 4/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Plaintiff has been investing time, efforts and expending huge monies in sales promotion and advertisements thereof. The Plaintiff has annexed a copy of the statement of gross revenue earned and advertisement expenses incurred by the Plaintiff under the said Trade Mark during the years 1967 till 2017 duly certified by its Chartered Accountant. It is stated that the member of trade, public including press and other media also refer the Plaintiff by the said well-known Trade Mark i.e. 'Mahindra'.
6. It is stated that the said Trade Mark has acquired tremendous goodwill and reputation due to the aforesaid and is exclusively associated with the Plaintiff and Mahindra Group of Companies. It is stated that even the Hon'ble Apex Court and other High Courts have held that the trade marks "Mahindra" and "Mahindra & Mahindra" have acquired distinctiveness and secondary meaning qua goods and services of the Plaintiff. The Plaintiff submits that said Trade Mark has become distinctive indicia of the Plaintiff in relation to all its business and activities. It has been held that people have naturally come to associate the name MAHINDRA with a certain standard of goods and services and any attempt by another person to use the name MAHINDRA will create an impression of a connection with the Plaintiff/Mahindra Group of Companies. It is thus stated that the Plaintiff has successfully and vigorously enforced its trade mark rights in the said Trade Mark in relation to various goods and services. It is stated that the said Trade Mark is also 5/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc listed as a well-known mark in the official website of the Trade Marks Registry as indicated at serial No.31 of Exhibit E.
7. It is stated that in 1989, Mr. Anand Mahindra ("Plaintiff's Chairman") joined the Mahindra Group of Companies as Deputy Managing Director of Mahindra Ugine Steel Company Limited (MUSCO). Recognizing his leadership skills, the Plaintiff's Chairman was appointed as Deputy Managing Director of the Plaintiff in 1991, Managing Director in 1997, Vice-Chairman in 2001, Chairman of the board and Managing Director of Mahindra Group in 2012 and Executive Chairman of the Plaintiff & Chairman of the Mahindra Group in 2016. It is stated that over the period of time, the Plaintiff and the Plaintiff's Chairman have become well known and famous and his reputation enures to the benefit of the Plaintiff. It is stated that in fact, the Plaintiff's Chairman is a very famous personality not only in India but all over the world, and the Plaint discloses material to this effect.
8. As stated above, the Plaintiff and the Plaintiff's Chairman are very closely connected to each other. It is stated that the surname 'Mahindra' of the Plaintiff's Chairman is the same as the company name of the Plaintiff and also the Plaintiff's well-known and registered said Trade Mark. It is stated that the Plaintiff's Chairman has been interwoven and associated with the Plaintiff for many years, from 1991 as Deputy Managing Director of the Plaintiff to today as the Chairman of the Plaintiff. Thus, the Plaintiff's name, goodwill, reputation is interrelated, closely connected/ 6/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc associated with the Plaintiff's Chairman and vice versa. It is stated that for the world at large, the face of the Plaintiff is the Plaintiff's Chairman i.e. Mr Anand Mahindra who has been an outstanding leader of the Plaintiff / the Mahindra Group of Companies and his persona is thus linked/associated with the Plaintiff. It is stated that any misuse of the name of the Plaintiff's Chairman will naturally lead to violation of the rights of the Plaintiff in respect of the said Trade Mark and vice versa.
9. It is stated that the name of the Plaintiff's Chairman and his persona is immediately and exclusively associated with the Plaintiff in the public perception and the same has acquired goodwill and repute worldwide. It is stated that the popularity, goodwill and reputation of the Plaintiff and the Plaintiff's Chairman enures to the benefit of each other. It is stated that a Google search for the name 'Anand Mahindra' throws up most of the results related to the Plaintiff and the Plaintiff's Chairman. It is stated that there is no other person of that name enjoying such reputation and goodwill as the Plaintiff's Chairman, or who would stand to gain more by the use or to lose more by the misuse of the name of the Plaintiff's Chairman.
10. It is stated that on account of the name of the Plaintiff's Chairman being so renowned and associated with the Plaintiff, any name similar to the name of the Plaintiff's Chairman and the said Trade Mark, for commercial purposes or otherwise, and through any form of media, without the consent of the Plaintiff would amount to infringement, passing off and usurping the goodwill attached to the said Trade Mark 7/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc on account of close connection / association between the Plaintiff and the Plaintiff's Chairman.
11. It is stated that in the aforesaid circumstances, the Plaintiff has both statutory as well as common law rights in and over the said Trade Mark in relation to their aforesaid goods / services and / or similar goods and services and also has other statutory rights and common law rights due to the said Trade Mark being a well- known trade mark and it having acquired secondary significance. It is stated that use of any trade mark/name identical with or deceptively similar to the Plaintiff's registered and well-known said Trade Mark as well as the name of the Plaintiff's Chairman in respect of the same or similar, cognate, allied or complementary goods or services or in respect of any business activities or goods/services would tantamount to infringement of the Plaintiff's registered and well-known said Trade Mark and / or passing off using the said Trade Mark and the name of the Plaintiff's Chairman.
12. It is stated that in or about September 2017, the Plaintiff was shocked to come across Defendants use of the name "ANAND MAHENDRA" ("Impugned Mark / Name") in relation to their commercial project titled "Anand Mahendra IT / Business Park" ("the Impugned Project") being developed by the Defendant No. 1, which is an under construction project till date. It is stated that a photograph of the Impugned Project bearing the Impugned Mark / Name is annexed at Exhibit F to the Plaint. It is stated that upon further inquiry, the Plaintiff also came across the 8/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Defendants website www.mahendrabachhav.com; a Facebook account with the profile name 'Anand Mahendra IT/Business Park' and the use of the names/marks "Mahendra Group"/ "Mahendra Consultants" in relation to the Defendants' various businesses and activities such as constructions services, providing rental spaces, consultation services etc ("Impugned Services"). It is stated that the Plaintiff found that the Defendants are widely promoting / advertising the Impugned Project bearing the Impugned Mark / Name and the names/marks "Mahendra Group" and "Mahendra Consultants" on the above website and Facebook page. The Plaintiff has annexed copies of the relevant webpages from www.mahendrabachhav.com and the Facebook page of the profile name 'Anand Mahendra IT/Business Park' displaying the use of the Impugned Mark / Name , the names/marks "Mahendra Group" and "Mahendra Consultants" at Exhibit G-1 and G-2 to the Plaint. The Impugned Mark / Name and the names/marks "Mahendra Group" and "Mahendra Consultants" are defined to mean "Impugned Marks".
13. It is stated that as the Plaintiff found that the use of the Impugned Marks in relation to the Impugned Project and Impugned Services would lead to confusion / deception and considering the use of the Impugned Marks amounted to infringement of the Plaintiff's rights subsisting in the said Trade Mark and passing off of the said Trade Mark including the name of the Plaintiff's Chairman, in order to afford an opportunity to amicably settle the matter, the Plaintiff's representatives immediately 9/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc reached out to Defendant No. 4 inter alia expressing concerns on the use of the Impugned Marks in relation to the Impugned Project. It is stated that at that time, the Plaintiff's representative was given to understand that the Impugned Project, particularly use of the Impugned Marks, may be discontinued as the Impugned Project (without bearing the Impugned Marks) would be sold to third party. Hence, the Plaintiff awaited the dis-continuation of the use of the Impugned Marks. However, upon following up subsequently, in February 2018, the Plaintiff was shocked and surprised to hear from Defendant No. 4 that he would continue using the Impugned Marks on the pretext that he had obtained necessary permissions for the Impugned Project bearing the Impugned Mark / Name from local municipal offices.
14. Being aggrieved by the Defendants' use of the Impugned Marks, the Plaintiff, through its Advocate's letter dated 8 February 2018 issued a cease and desist notice ("said notice") calling upon the Defendants to stop the use of the Impugned Marks or any other similar name/mark as the said use amounts to an infringement of the said Trade Mark and passing off of the said Trade Mark including the name the Plaintiff's Chairman. It is stated that a copy of the said notice is annexed at Exhibit to the Plaint.
15. It is submitted that in the first week of March 2018, the Plaintiff's Advocates received a reply dated 1 March 2018 ("said Reply No 1") on behalf of Mahendra Consultants. The Plaintiff has annexed a copy of the said Reply No 1 at 10/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Exhibit I to the Plaint. It is stated that vide the said Reply No 1, the Plaintiff was informed that the Defendants wanted to amicably settle/resolve the dispute and sought few days' time to provide a settlement proposal. Thereafter, in the last week of March 2018, the Plaintiff's Advocates received another reply dated 23 March 2018 on behalf of Defendant No. 2 ("said Reply No 2"). A copy of the said Reply No 2 is annexed at Exhibit J to the Plaint. It is stated that in the said Reply No 2, the Defendant No. 2 denied the contentions of the said notice issued on behalf of the Plaintiff. The Defendant No. 2 stated that most of the buildings and commercial complexes constructed by the Defendants are named as "Anand Rupa", "Anand Deep", "Anand Geet" given by Mr. Mahendra Bachhav as an emotional tribute to Mr. Mahendra Bachhav's father Mr. Anand Bachhav; that the Impugned Project is being constructed under the supervision of Mrs. Smita Bachhav who is wife of Mr. Mahendra Anand Bachhav; that since the Impugned Project is going to be one of the first IT Parks to be constructed in Nashik Mrs. Smita Bachhav wished to name the unique project after her husband's name i.e. Mr. Mahendra Bachhav; and that as the Defendants have a tradition of naming all their constructions starting with the name "Anand", it was decided to name it as "Anand Mahendra". It is stated that the Defendant No.2 also proposed to put up a disclaimer on its websites and other online web portals, etc that the Defendants are not at all connected/ related/ associated/ sponsored or affiliated with the Plaintiff.
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16. It is stated that by the Plaintiff, while the proposed disclaimer would not have resolved the Plaintiff's concerns, but keeping in mind that the Defendant No. 2/Defendants wanted to amicably settle/resolve the dispute, vide their Advocates letter dated 4 May 2018 the Plaintiff called upon the Defendant No.2/Defendants to provide further/detailed particulars in respect of their proposal viz. the manner of the disclaimer, exact locations where the disclaimer would appear, etc. The Plaintiff has annexed a copy of the letter dated 4 May 2018 issued by the Plaintiff's Advocates at Exhibit K to the Plaint. It is stated that as no response was received on behalf of the Defendants, the Plaintiff's Advocates issued an email reminder on 24 May 2018 upon the Defendant No.2's/Defendants' Advocates. The Defendant No.2/Defendants failed to reply to the Plaintiff's email reminder dated 24 May 2018. Thereafter, the Plaintiff's Advocates issued another letter dated 9 August 2018 upon the Defendant No.2's/Defendants' Advocates once again calling upon them to provide detailed particulars of the proposed settlement. The Plaintiff has annexed a copy of the letter dated 9 August 2018 at Exhibit L to the Plaint.
17. It is stated that on 15 October 2018, the Plaintiff's Advocate received a reply dated 12 October 2018 ("said Reply No 3") on behalf of the Defendants offering unacceptable proposal terms and giving frivolous and legally untenable explanations for using the Impugned Marks viz: "We submit that we had unmistakably stated in our proposal that if your client restricts our clients' business activities only on the basis of your 12/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc client's trade name MAHINDRA & MAHINDRA, it will take away the constitutional rights of other people in India particularly of our client and/or other entities and/or of a layman to freely carry on their business under their own name or their family's name, if their own name and/or any of their family member's name is MAHINDRA and/or MAHENDRA and/or MAHENDAR. Further, we repeat and reiterate that in India it is common to start any business in personal name and/or in the name of wife and/or sons or daughters and our client has done the same which cannot be limited by your client". The Plaintiff has annexed a copy of the said Reply No 3 at Exhibit M to the Plaint. It is stated the Plaintiff's through their Advocates letter dated 17 November 2018 (sent through email) replied to the said Reply No 3 informing the Defendants that the proposal sent by the Defendants is unacceptable and that the Non-affiliated Disclaimer would add confusion and hence called upon the Defendants to stop the use of the Impugned Marks within 24 hours of receipt of the said letter dated 17 November 2018 as considerable time had already passed on account of dilly-dally techniques adopted by the Defendants to give detailed settlement proposal. The Plaintiff has annexed a copy of the letter dated 17 November 2018 along with the Plaintiff's Advocates email dated 17 November 2018 at Exhibit N to the Plaint.
18. It is the Plaintiff's case, that from the communications exchanged between it and the Defendants, it is evident that the Defendants were not serious about the settlement and proposed a settlement only to gain time to continue the use of the 13/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Impugned Marks. Thus, it is evident that the intention of the Defendants in adopting and continuing the use of the Impugned Marks which are identical or deceptively similar to the said Trade Mark and the name of the Plaintiff's Chairman is malafide and with a wrongful and illegal view to cash in/trade upon the reputation and goodwill of the Plaintiff's said Trade Mark and the name of the Plaintiff's Chairman mainly by showing association/connection of the Impugned Project with the Plaintiff and/or the Plaintiff's Chairman. It is stated that the reasoning given by the Defendant No. 2 for adoption of the Impugned Mark / Name is baseless and sheer afterthought. It is stated that the adoption of the Impugned Marks is dishonest and in bad faith as the Defendants have deliberately adopted the Impugned Mark / Name , so as to closely resemble Plaintiff's said Trade Mark and name of the Plaintiff's Chairman. It is stated that the Impugned Mark / Name would clearly cause confusion/association with the Plaintiff and the Plaintiff's Chairman.
19. It is stated that the adoption of the Impugned Marks by the Defendants is and indicates a deliberate attempt on the part of the Defendants to come as close as possible to the Plaintiff. It is stated that the Defendants are not entitled to use the Impugned Mark / Name 'Anand Mahendra' as it results in infringement and passing off of the said Trade Mark including the name of the Plaintiff's Chairman and also constitutes unfair advantage and passing off. It is stated that the adoption of Impugned Mark is unjustifiable. It is stated that the alleged justification provided by the 14/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Defendants in adopting the Impugned Marks is legally not tenable and more importantly, the same is purely an after-thought on the part of the Defendants. It is stated that in the Apex Court's decision upholding the said Trade Mark "Mahindra" to be well-known vide its decision of 2001, the defendant therein had adopted similar defence of being personally known as 'Mahendrabhai', however the Hon'ble Supreme Court reiterated that real test should be of misrepresentation, real likelihood of confusion and consequent damage to the Plaintiff. It is therefore stated that the Defendants have deliberately, mischievously and with malafide intention adopted the Impugned Marks with full knowledge of Plaintiff's said Trade Mark and the name of the Plaintiff's Chairman with the objective to infringe Plaintiff's said Trade Mark and / or to misappropriate the name of the Plaintiff's Chairman or to pass off the Impugned Project as and for those of or as associated with the Plaintiff. Such an impression among the business community and the public is inevitable given the tremendous goodwill, reputation and the secondary meaning acquired by the said Trade Mark and the repute and goodwill subsisting in the name of the Plaintiff's Chairman. It is stated that the public at large will mistake 'Mahendra' to be 'Mahindra' which has acquired secondary meaning. Particularly when 'Mahendra' is coupled with the name 'Anand' the confusion is inevitable. Moreover, the likelihood of confusion is even higher due to the proximity of the location of the Impugned Project and the Plaintiff's manufacturing plant situated in Nashik. 15/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 :::
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20. It is stated that the Plaintiff has a significant presence in the city of Nashik, where the Defendants inter alia are carrying on their infringing activities. It is stated that the Plaintiff has been manufacturing large volumes of vehicles in its manufacturing plant spread across about 160 acres on the outskirts of Nashik city. It is stated that since the car plant became operational viz: 1981, the units of vehicle manufactured in the said plant are over 800 cars per day. The said plant boasts of various state of the art facilities such as robotic wielding, robotic painting, CED process (Cathodic electro deposition process), hemming robots etc. Most of the successful brands of sports utility vehicles of Plaintiff namely Scorpio, Bolero, Xylo, Quanto etc. are manufactured in the said plant. It is stated that the Plaintiff with the help of its employees at the said manufacturing plant has also undertaken several social initiates for the betterment of people residing in and around Nashik city, such as adoption of 10 promising athletes from the tribal areas, AIDS awareness and rehabilitation drive, tree plantation drive, cleanliness drives at schools, bus stands, Godavari river bed, girl child education, upliftment of tribal schools etc. undertaken from time to time.
21. It is stated that the said Trade Mark is well-known mark and has tremendous goodwill and reputation in India and world over. The Defendants' use of the Impugned Marks is without due cause, takes unfair advantage of and is detrimental to the distinctive character and repute of Plaintiff's said Trade Mark and the name of the 16/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Plaintiff's Chairman. It is stated that the rationale given by the Defendant No. 2 for adoption of the Impugned Marks particularly Impugned Mark / Name is purely an afterthought to avoid liability. It is stated that assuming without admitting the rationale has any merits, however the same is legally untenable as the use of the Impugned Marks by the Defendants would most certainly lead to confusion amongst members of trade and general public and deceive them into believing that the Defendants and/or their Impugned Project or Impugned Marks are associated with / or connected to or under license from the Plaintiff, which is not true.
22. It is stated that the likelihood of confusion among the general public is very high, on account of much prior existence and wide presence of the Plaintiff in the entire country and also in the Nashik city as well as significant presence in the Real Estate and IT sector, through its group company, Mahindra Lifespaces Developers Limited, Tech Mahindra Limited etc. It is stated that the Impugned Mark / Name has been adopted and used by the Defendants to take unfair advantage of the Plaintiff's reputation / goodwill. This is a deliberate act in bad faith. It is stated that the Plaintiff being in IT services and real estate business, and the Plaintiff's Chairman being closely associated with the Plaintiff, the public will believe that the Defendants' Impugned Project, activities and business are those of or associated with the Plaintiff. It is stated that by the impugned use, the Defendants are also diluting the Plaintiff's goodwill and reputation.
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23. It is stated that the Plaintiff has come across various third party websites which are relating to real estate which display Defendants' Impugned Project as "Anand Mahindra IT Business Park" instead of "Anand Mahendra IT Business Park". The Plaintiff has annexed copies of the relevant webpages of the said websites at Exhibit O to the Plaint. It is therefore stated that the above webpages clearly establishes that use of the Impugned Mark / Name has already started creating confusion / deception in the mind of the public at large. It is further stated that in fact, there has been an actual confusion which is evident from a comment shared by a wary user on the Facebook page of the Defendants who has tried to correct name of the page by stating 'Anand Mahindra and not Mahendra' and also from the webpage/ link https://www.makemytrip.com/hotels/nasik-hotels-near- anand_mahindra_it_park.html hosted by Make My Trip. The Plaintiff has annexed copies of relevant webpages at Exhibit P to the Plaint. It is stated that the Plaintiff has no control whatsoever on the Defendants' activities, Impugned Project or business and, therefore, any deficiency therein would adversely affect the reputation and goodwill of the Plaintiff qua said Trade Mark and the name of the Plaintiff's Chairman.
24. The Learned Senior Counsel for the Plaintiff has submitted that the Defendants' Impugned Marks are identical or in any event deceptively similar to that the Plaintiff's said Trade Mark. The Learned Senior Counsel for the Plaintiff has 18/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc submitted that the intention of the Defendants in adopting and using the Impugned Marks shows the malafide of the Defendants to trade upon the reputation and goodwill of the Plaintiff's said Trade Mark. He has also submitted that the use of the Impugned Marks are admittedly subsequent to the Plaintiff's prior adopted, used and registered well-known said Trade Mark. He has further submitted that the adoption of the Impugned Marks by the Defendants is dishonest and in bad faith ab-initio.
25. I have considered the submissions made on behalf of the Plaintiff and also perused the Plaint and the Exhibits annexed thereto. The material produced with the Plaint, prima facie, shows that the Plaintiff is the owner of the trade mark "MAHINDRA" and "MAHINDRA & MAHINDRA" and it has acquired a considerable goodwill and reputation in the same. The Learned Senior Counsel for the Plaintiff has referred to the case reported in (2002) 2 Supreme Court Cases 147 between Mahendra & Mahendra Paper Mills Limited Vs. Mahindra & Mahindra Limited. The Plaintiff's said Trade Mark is a well-known trade mark which is also listed as a well-known mark in the official website of the Trade Marks Registry. The adoption of the Impugned Marks by the Defendants cannot be a matter of coincidence. Even at this ad-interim stage, the Plaintiff has annexed material to show actual instances of confusion and the Learned Senior Counsel has read through the relevant portions thereof. Further, I have also perused the copies of the communications exchanged between the Plaintiff and the Defendants. The Learned 19/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Senior Counsel has argued that the name of one of the Defendant's is Mahendra Bacchav and his father's name is Anand Bacchav. Thus, the present Defendants cannot be allowed to take up the defence of using one's personal name. In any event, 'Anand Mahendra' is not the name of Defendant No.4. Further, the use of a personal name is no defense to a passing off action. The Learned Senior Counsel for the Plaintiff has referred to the case reported in AIR 1996 Bombay 149 between Kirloskar Diesel Recon Pvt Ltd & Anr. Vs. Kirloskar Proprietary Ltd and Ors. Prima facie, on the basis of the material produced on record and also the submissions made, the use of the Impugned Marks constitutes an infringement of the Plaintiff's said Trade Marks and also passing off of the Defendants' services as those of the Plaintiff. Despite service, the Defendants have not appeared before this Court to dispute/ traverse the Plaintiff's case. In the circumstances, a strong prima facie case for the grant of ad- interim reliefs is made out. Unless reliefs as prayed for are granted, the Plaintiff is likely to suffer injury. The balance of convenience is in favour of the Plaintiff. The Plaintiff is also likely to suffer irreparable injury if the Defendants' acts of infringement continue.
26. In view of the above, there shall be an ad-interim order in terms of prayer clauses (a) and (b) of the Notice of Motion, which reads as under:
"(a) that pending the hearing and final disposal of the Suit, the Defendants by themselves, their partners/proprietors, employees, servants, agents, franchisees, dealers, manufacturers, licensees and all persons 20/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc claiming under them from, directly or indirectly, be restrained by a temporary order and injunction of this Hon'ble Court from infringing the Plaintiff's said Trade Mark "Mahindra" bearing registration numbers 322911, 338997, 728304, 800558, 800564, 2327472, 1460961 2454726, 2332514, 2404388, 2404390, 2454729, 2458230, 2466203 2503036, 2454730, 2458231, 2469548, 2503037, 2493829, 2334884, 2454732, 2458233, 2470462 and 2503039 in any manner and / or from using the Impugned Marks or any word identical with or deceptively similar to the said registered Trade Mark and the name of the Plaintiff's Chairman in connection with the goods / services for which the said Trade Mark is registered or any goods or services similar thereto and upon or in relation to any business, goods or services, the Impugned Project, labels, advertising material, letter-heads, stationery, dies, literature, or as a part of their trading style or trade name or trade mark and / or on their website and / or on goods and / or services and / or any domain name containing the Plaintiff's said Trade Mark or any other mark identical or deceptively similar to the Plaintiff's said Trade Mark or in any manner from building, marketing or offering for sale or advertising or dealing in any property / products or rendering any services under the Impugned Marks or any other mark which is identical or deceptively similar to the Plaintiff 's said Trade Mark including the name of the Plaintiff's Chairman;
(b) that pending the hearing and final disposal of the Suit, the Defendants by themselves, their partners/proprietors, employees, servants, agents, franchisees, dealers, manufacturers, licensees and all persons claiming under them from, directly or indirectly, be restrained by a temporary order and injunction of this Hon'ble Court from passing off the Impugned Project and the Impugned Services or any business of the 21/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 ::: ssp nmcdl 2800 of 2018.doc Defendants as and for those of or as associated with the Plaintiff by using the Impugned Marks or any mark/name identical with or deceptively similar to Plaintiff's said Trade Mark and the name of the Plaintiff's Chairman in connection with their Impugned Project and Impugned Services or any business, or as a trade name and / or on their website/s and / or on goods and / or services and / or any domain name/s containing Plaintiff's said Trade Mark and or any other mark similar to the Plaintiff's said Trade Mark or the name of the Plaintiff's Chairman or in any manner from building, marketing or offering for sale, advertising or dealing in any business, property / products or rendering any services under the Impugned Marks or any other mark or name which is similar to Plaintiff's said Trade Mark or the name of the Plaintiff's Chairman;"
27. The Plaintiff is not pressing for appointment of the Court Receiver at this stage.
28. This order will operate till 4th December 2018. List the matter on 3rd December 2018.
( S.J.KATHAWALLA, J. ) 22/22 ::: Uploaded on - 28/11/2018 ::: Downloaded on - 30/12/2018 08:35:38 :::