Delhi High Court - Orders
Tata Sons Private Limited vs Tatabeauty Cosmetics Ltd on 4 March, 2024
$~24
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 190/2024, I.A. 5120/2024, I.A. 5121/2024, I.A. 5122/2024
& I.A. 5123/2024
TATA SONS PRIVATE LIMITED ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Achuthan
Sreekumar, Mr. Rohil Bansal and Ms.
Apoorva Prasad. R. Advocates.
versus
TATABEAUTY COSMETICS LTD ..... Defendant
Through:
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
ORDER
% 04.03.2024 I.A. 5121 /2024 (Seeking leave to file Additional Documents)
1. The present application has been filed on behalf of the plaintiff under Order 11 Rule 1(4) of the Code of Civil Procedure, 1908 ("CPC") as applicable to commercial suits under the Commercial Courts Act, 2015 seeking to place on record additional documents.
2. The plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018.
3. Accordingly, the present application is disposed of.
I.A. 5122 /2024 (Exemption from filing original documents, clear copies with 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 15/03/2024 at 22:09:14 exact margins etc).
1. Exemption is granted, subject to all just exceptions.
2. Applicant shall file legible, clear, and original copies of the documents on which the applicant may seek to place reliance before the next date of hearing.
3. Accordingly, the present application is disposed of.
I.A. 5123/2024 (Exemption from pre-institution mediation)
1. Having regard to the facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd., FAO (COMM) 128/2021, exemption from attempting pre institution mediation is allowed.
2. Accordingly, the application stands disposed of.
CS(COMM) 190 /2024
1. Let the plaint be registered as a suit.
2. Upon filing of process fee, issue summons to the defendant through all permissible modes. Summons shall state that the written statement be filed by the defendant within 30 days from the date of receipt of summons. Along with the written statement, the defendant shall also file affidavit of admission/denial of the documents of the plaintiff, without which the written statement shall not be taken on record. Liberty is given to the plaintiff to file a replication within 30 days of the receipt of the written statement. Along with the replication, if any, filed by the plaintiff, affidavit of admission/denial of documents filed by the defendant, be filed by the plaintiff, without which the replication 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.
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 15/03/2024 at 22:09:14
3. List before the Joint Registrar for marking of exhibits on 07th May, 2024.
4. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
I.A. 5120/2024 (Application Under Order XXXIX Rules 1& 2, CPC).
1. This application has been filed under Order XXXIX Rules 1 & 2 of Code of Civil Procedure, 1908 by plaintiff as part of the suit for permanent injunction restraining infringement of registered and well-known trade mark, 'TATA' of plaintiff, by defendant including passing off, dilution and other attendant reliefs.
2. The plaintiff was established in the year 1917 and claims to be India's oldest, largest, most trusted and best-known business conglomerate. The revenue of the TATA group of Companies taken together of financial year 2022-23 was about $150 billion dollars. They operate a website at www.tata.com.
3. The House of TATA was declared to be India's most valuable brand by 'Interbrand' and in the list of top 40 brands in India. The multi brand portfolio of the conglomerate has been valued at over US$26 billion in 2023 by UK-based consultancy firm called 'Brand Finance'.
4. The trade mark 'TATA' is derived from the surname of the plaintiff's founder. The House of TATA includes a list of 100 companies using the brand name 'TATA'. The trademark has been recognised as a well-known trademark within the meaning of Section 2 (1) (zg) read with Section 11 (6) of the Trademarks Act, 1999.
5. Counsel for plaintiff points out the order of Division Bench of this Court dated 19th September, 2022 in FAO (OS) (COMM) 62/2022 titled as Tata Sons 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 15/03/2024 at 22:09:14 Pvt. Ltd. v. Hakunamatata Tata Founders & Ors. Relevant extract from the order is as under:-
"...Even otherwise, we do not have any reason to doubt the pre-eminence of the trademarks of the Appellant in India.
xxxx xxxx xxxx In India, the trademark TATA is embedded in the sub-consciousness of public. In public consciousness, the word "TATA" is only relatable to TATA group of companies. ...The pre-eminence of the business reputation of the TATA group and the popularity of the trademarks is beyond contest. There is sufficient pleading in the plaint to reach the said conclusion. Even otherwise, this Court can take judicial notice of the pre-eminence of popularity of the trademarks in question.
xxxx xxxx xxxx ...The universal popularity of the appellant's trademark is not confined to a few products or services. As stated above, in public consciousness, TATAs are believed to be ubiquitous across all business."
6. The house of TATA sells various retails products through their offline and online channels including TATA CLiQ and TATA CLiQ Luxury at www.tatacliq.com and www.luxury.tatacliq.com.
7. The grievance is against the defendant who is selling cosmetic products from Hounslow, United Kingdom and using the brand name 'TATA BEAUTY'. The plaintiff has placed documents on record which shows that its products are available to customers including India through online sales. Defendant operates website through www.tatabeautycomsetics.com . They are using the following mark for their product:
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 15/03/2024 at 22:09:14
8. Their products are advertised on social media handles inter alia as under:
a. On Facebook:
https://www.facebook.com/people/Tatabeauty-Cosmetics/10008 7280642715/ b. On Instagram:
https://www.instagram.com/tatabeautycosmetics/?igshid=OGQ5 ZDc2ODk2ZA%3D%3D c. On Pinterest:
https://in.pinterest.com/Tata_beauty1/ d. On Youtube:
https://www.youtube.com/channel/UCJPmeLWhiQX92d4woAo _Ihg?reload=9
9. WHOIS search result of the defendant's domain shows that it was registered on 28th April, 2023. On 09th January, 2024, the investigator appointed by plaintiff placed two orders for purchasing six pieces of the defendant TATA branded products and was ultimately delivered at the address in New Delhi. The products are as under:
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 15/03/2024 at 22:09:14
10. Physical products have also been handed up in the Court for perusal.
11. In view of the above facts and circumstances, this Court is satisfied that plaintiff has made out a prima facie case for grant of an ex parte ad interim 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 15/03/2024 at 22:09:14 injunction till the next date of hearing. Balance of convenience lies in favour of plaintiff, and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted. The relief is being restricted at this ex parte stage to selling of products by the defendant to Indian customers in India through their online platform.
12. Accordingly, till the next date of hearing, ex parte ad interim injunction passed in the following terms:
i. Defendant may be restrained directly or indirectly from selling their products under the Trade Mark 'TATA BEAUTY' or through any mechanism offline or online to Indian customers in India and ensure that no such sales are carried out from their platform and that any offer for purchase through their online platforms from customers in India should not be executed.
13. Issue notice, returnable before the Court on 22nd May, 2024 through all permissible modes on steps being taken by the plaintiff. Affidavit of service, along with proof thereof, be placed on record before the next date of hearing.
14. Reply be filed within four weeks with advance copy to counsel for plaintiff, who may file rejoinder thereto, if any, before the next date of hearing.
15. Compliance of Order XXXIX Rule 3, CPC be effected within one week.
16. Order be uploaded on the website of this Court.
ANISH DAYAL, J MARCH 4, 2024/RK/ig 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 15/03/2024 at 22:09:15