Delhi High Court - Orders
Tata Power Solar Systems Limited & Anr vs Www.Tatapowersolardealership.Co.In ... on 20 May, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~42
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 419/2024
TATA POWER SOLAR SYSTEMS LIMITED & ANR. ..... Plaintiffs
Through: Mr. Peeyoosh Kalra, Mr. Krisna
Gambhir and Ms. Simranjot Kaur,
Advocates.
versus
WWW.TATAPOWERSOLARDEALERSHIP.CO.IN & ORS.
..... Defendants
Through: Mr. Sarfaraz Khan and Mr. Mirza
Amir Baig, Advocates for D-14.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 20.05.2024 I.A. 29730/2024 (exemption from serving an advance copy to Defendant Nos. 1 to 3)
1. The Plaintiffs allege that Defendant Nos. 1 to 3 are perpetrating fraud on the general public by creating a false association with the Plaintiff, resulting in grave financial losses to the public. Considering the nature of controversy involved in the present suit as well as the peculiar facts and circumstances of the case, exemption from effecting advance service on Defendant Nos. 1 to 3 is allowed.
2. Disposed of.
I.A. 29732/2024 (seeking exemption from filing certified copies, typed copies of dim documents and documents with improper double space/ margins and translated copies of the annexures)
3. Exemption is granted, subject to all just exceptions.
4. The Plaintiffs shall file legible and clearer copies of exempted CS(COMM) 419/2024 Page 1 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 23/05/2024 at 20:45:29 documents, compliant with practice rules, before the next date of hearing.
5. Disposed of.
I.A. 29731/2024 (seeking exemption from filing original documents)
6. Exemption allowed. Subject to all just exceptions. The original documents be filed within a period of two weeks from today.
7. Disposed of.
I.A. 29733/2024 (seeking exemption from exhausting the remedy of pre- institution mediation)
8. 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.
9. Disposed of.
I.A. 29734/2024 (seeking leave to file additional documents)
10. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
11. Applicants, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
12. Disposed of.
I.A. 29735/2024 (seeking exemption from effecting advance notice on Defendant Nos. 15 and 16)
13. Issue notice to Defendants No. 15 & 16, by all permissible modes, upon filing of process fee, returnable on the next date of hearing. Reply, if any, be filed within four weeks from the date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
14. Re-notify on 24th October, 2024.
1 2023 SCC OnLine SC 1382.
CS(COMM) 419/2024 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 23/05/2024 at 20:45:29 I.A. 29736/2024 (seeking extension of time for filing court fees)
15. The Court fees has been deposited with the Registry and the e-court fee certificate is likely to be issued shortly. Accordingly, the time period to file deficient court fee is extended by a period of one week from today.
16. Disposed of.
CS(COMM) 419/2024
17. Let the plaint be registered as a suit.
18. Issue summons. Summons are accepted by Mr. Sarfaraz Khan, counsel for Defendant No. 14. He confirms the receipt of paperbook, and waives the right of formal service of summons. Written statement shall be filed by the Defendant No. 14, within 30 days from today.
19. Upon filing of process fee, issue summons to the remaining Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of service. Along with the written statement(s), the Defendants shall also file an affidavit(s) of admission/denial of the documents of the Plaintiffs, without which the written statement(s) shall not be taken on record.
20. Liberty is given to the Plaintiffs to file a replication(s) within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiffs, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiffs, 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.
CS(COMM) 419/2024 Page 3 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 23/05/2024 at 20:45:29
21. List before the Joint Registrar for marking of exhibits on 21st August, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
22. List before Court for framing of issues thereafter.
I.A. 29729/2024 (under Order XXXIX Rule 1 & 2 r/w Section 151 of CPC)
23. Mr. Peeyoosh Kalra, counsel for Plaintiffs, presents the following facts and submissions seeking ex parte ad interim injunction against Defendants No. 1 to 3:
23.1. Plaintiff No. 1, a part of the TATA Group of Companies, is a solar module manufacturer and provides innovative solar power solutions to consumers across the industry and the general public, such as manufacture and sale of solar photovoltaic (PV) modules, installation of Grid-Connected Solar Rooftop Power plants, etc. Plaintiff No. 2 is the parent company of Plaintiff No. 1 and is the registered proprietor of the trademark "TATA". In September, 2012, Plaintiff No. 1 entered into a Brand Equity and Business Promotion agreement with Plaintiff No. 2 which grants them the right to use the trademark/brand name "TATA".
23.2. Plaintiffs are the registered proprietors of the trademarks "TATA", "TATA POWER", " " and other formative trademarks 2, under various classes in relation to solar energy solutions. The Plaintiff also has a registered domain name "www.tatapowersolar.com" and promotes and advertises its products and services through its website "www.tatapowersolar.com". Plaintiffs have been continuously, extensively 2 "Plaintiffs' trademarks"CS(COMM) 419/2024 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 23/05/2024 at 20:45:29 and widely using their trademarks in relation to their products/services since February, 2020, and the said trademarks are exclusively associated with Plaintiff No. 1.
23.3. On account of the long, continuous and wide use and promotion of the Plaintiffs' trademarks, it has earned substantial goodwill and reputation in the industry. This fact is evidenced by the Plaintiff's financial highlights for the last four years, which are tabulated in Paragraph No. 18 of the present application, and indicate that in FY 2023-24, Plaintiff had a sales turnover of INR 1907 crores. Additionally, the Plaintiff has also incurred substantial amounts of money in advertising and promoting its brands and business, details of which are also delineated in Paragraph No. 18 of the Application. 23.4. Plaintiffs' grievance in the present suit, arises from the unauthorised use of the Plaintiffs' trademarks by Defendant Nos. 1 to 3, who are individuals operating a fake dealership of the Plaintiff's products to dupe prospective dealers/customers by incorporating the Plaintiff's trademarks in their domain names, email addresses, communications, fake dealership letters/letters of intent, etc. Defendant No. 1 and 2 are the registrants of the domain names "www.tatapowersolardealership.co.in", and "www.tatapowersolars.com"3 respectively. These domain names and associated websites claim to be providing services of the Plaintiffs and/or claim to be the authorised dealers/distributors of the Plaintiff. Defendant No. 3 is/are the unknown person(s), who are engaging in infringing activities by approaching victims via the mobile numbers +91-9109840660; +91- 7384040589; +91-7501191497; +91-9163594301, however, their identity(ies) is/are not known and cannot be ascertained by the Plaintiff, as CS(COMM) 419/2024 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 23/05/2024 at 20:45:29 such, they have been impleaded as Ashok Kumar/John Doe(s)4. Defendant No. 4, Hosting Concepts B.V. is the Domain Name Registrar for the impugned domain names, whereas Defendant Nos. 5 to 14 are Telecom Service Provides and Head Offices of Banks corresponding to the account numbers where the victims have sent sums of money. Defendant Nos. 15 & 16 are the Department of Telecommunications and Ministry of Electronic Information & Technology respectively. Defendant Nos. 5 to 16 have been impleaded for the limited purpose of ensuring compliance with the orders of this Court.
23.5. Between February, 2024 to April, 2024, the Plaintiff was alerted that many innocent persons were duped into parting with sums of money, by Defendants No. 1 to 3, on the false promise of either providing services of the Plaintiffs and/or becoming an authorised dealer/distributor of the Plaintiffs. The modus operandi of the fraud perpetuated by Defendants No. 1 to 3 is to approach victims via WhatsApp accounts, mobile numbers and email addresses associated with the impugned domain names, claiming to be employees of Plaintiff No. 1, and offer services and/or providing distributorships pf the Plaintiff No. 1, with the ulterior motive of collecting money for such services. For this purpose, Defendant Nos. 1 to 3 also furnish bank account details to receive amounts sought from victims. The details of the different bank account numbers used by Defendant Nos. 1 to 3 and their associated banks are delineated in Paragraph No. 22 of the application. It is pertinent to note that even though Defendant No. 1's website is currently not available on its domain name, however, they 3 "Impugned domain names"
4 Hereinafter, any reference to "Defendant No. 3" refers to unknown person(s), who have been impleaded CS(COMM) 419/2024 Page 6 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 23/05/2024 at 20:45:29 continue to use the Plaintiffs' trademark as part of their email communications.
23.6. In order to perpetuate the fraud and in order to appear legitimately and genuinely associated with the Plaintiff, Defendant Nos. 1 to 3 have sent fabricated employee IDs, dealership letters/letters of intent, certificates, confirmation letter, invoices etc., bearing the Plaintiff's trademarks, to the victims. Illustratively some of the aforenoted documents are depicted as follows:
" ",
as Ashok Kumar/John Doe(s).
CS(COMM) 419/2024 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 23/05/2024 at 20:45:30 " ", " " and " "
23.7. In view of the above, and considering the nature and extent of the fraud perpetuated by Defendant Nos. 1 to 3, the Plaintiffs seek leave of this Court to implead other unnamed defendants, as and when they become known, and are found to be indulging in similar activities of infringing on the Plaintiff's trademark and passing off the same as being genuinely associated with the Plaintiff, with the motive to dupe or defraud the public.CS(COMM) 419/2024 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 23/05/2024 at 20:45:30
24. The Court has considered the afore-noted facts, submissions and documents placed on record by the Plaintiff. On a prima facie assessment, it is established Plaintiffs are the registered proprietors of the trademarks "TATA", "TATA POWER" and the logo " ". As such, only the Plaintiffs and any peron duly authorised by them can use the said trademarks. Further, Defendants No. 1 to 3 falsely claim to be the authorised employees/dealers of the Plaintiff, going so far as to furnish fabricated documents and employee ID cards, which bear the Plaintiffs' trademarks so as to pass off the serives offered by them as genuinely coming from the Plaintiff. A comparison of the Plaintiffs' original webiste and Defendant No. 2's impugned domain is as follows:
Plaintiff's domain Defendant No. 2's domain
www.tatapowersolar.com www.tatapowersolars.com
CS(COMM) 419/2024 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 23/05/2024 at 20:45:30
25. From the above, it is evident that Defendant No. 2's website is an exact replica of the Plaintiff's authentic website. The only discernable difference is the lack of the animated character of the website guide at the bottom right side of the website. The manner of misuse of the Plaintiffs' trademark and infringement of their trademark is further evident from the communication being sent by them as mentioned hereinabove. Considering the substantial goodwill and reputation of the Plaintiff and the fact that the services offered by them are highly technical and expensive, the misuse of the Plaintiffs' trademarks by Defendant Nos. 1 to 3 is deceitful, malafide and intended to wrongfully and illegally gain monetary sums from the public. This unauthorised use of the Plaintiffs' trademarks, prima facie, amounts to infringement and passing off.
26. In light of the above, the Court finds that Plaintiffs have made out a prima facie case in their favour and in case no ex-parte ad-interim injunction is granted, the Plaintiffs will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiffs and against the Defendants.
27. Accordingly, till the next date of hearing, the Defendant Nos. 1 to 3 and/or any other person acting on their behalf, are restrained from using the Plaintiffs' trademarks "TATA", "TATA POWER", "TATA POWER CS(COMM) 419/2024 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 23/05/2024 at 20:45:30 SOLAROOF"/ " ", other formative marks or any other deceptively similar mark, that would amount to infringement or passing off of Plaintiff's registered trademarks.
28. Defendant No. 4, the Domain Name Registrar, is directed to block and suspend the impugned domain names www.tatapowersolardealership.co.in and www.tatapowersolars.com. They shall, within four weeks from the date of this order, file in a sealed cover, the complete details concerning the registrants of the aforesaid domain names, including KYC details of the registrant, as available with them. A copy of the said documents shall also be provided to counsel for Plaintiffs, which shall be strictly used by them for the purpose of investigation and identification of the perpetrators.
29. Defendant No. 5, Bharti Airtel Limited, is directed to temporarily block the mobile numbers +91-9109840660; +91-7384040589; +91- 7501191497; +91-9163594301. They shall, file in a sealed cover, the details of respective persons in whose name the above phone numbers are registered, including KYC documents. A copy of the said documents shall also be provided to counsel for Plaintiff, which shall be strictly used by them for the purpose of investigation and identification of the perpetrators.
30. Defendant Nos. 6 to 14, the various banks where Defendant Nos. 1 to 3 have bank accounts, are directed to freeze the respective bank accounts numbers mentioned at Paragraph No. 22 of the application. Each bank shall identify which of these bank account numbers are registered with them and implement the seizing order accordingly. They shall, within three weeks from the date of this order, file in a sealed cover the information, including KYC documents, pertaining to the bank account holders of the aforenoted CS(COMM) 419/2024 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 23/05/2024 at 20:45:30 bank accounts. A copy of the said documents shall also be provided to counsel for Plaintiffs, which shall be strictly used by them for the purpose of investigation and identification of the perpetrators.
31. Defendant No. 15 and 16, Department of Telecommunications and Ministry of Electronics and Information Technology respectively, are directed to issue necessary directions to the telecom service providers and internet service providers to block access to the websites www.tatapowersolardealership.co.in and www.tatapowersolars.com, as identified by the Plaintiffs.
32. In light of the above, Defendant Nos. 4 to 16 are also directed to file compliance affidavit within a period of three weeks from today.
33. Issue notice. Mr. Sarfaraz Khan, counsel for Defendant No. 14, accepts notice. Reply, if any, be filed within four weeks from the date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
34. Issue notice to the remaining Defendants, by all permissible modes, upon filing of process fee, returnable on the next date of hearing. Reply, if any, be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
35. Compliance of Order XXXIX Rule 3 of CPC be done with one week from today.
36. List before the Court on 24th October, 2024.
SANJEEV NARULA, J MAY 20, 2024/as CS(COMM) 419/2024 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 23/05/2024 at 20:45:30