Delhi High Court
Intel Corporation vs Anil Hada And Ors. on 6 November, 2006
Author: Pradeep Nandrajog
Bench: Pradeep Nandrajog
JUDGMENT Pradeep Nandrajog, J.
1. The 2 captioned applications have been filed by the common plaintiff in the 2 suits, namely, Intel Corporation seeking an interim injunction against the defendants in the 2 suits from using the word 'INTEL' as a part of their corporate name.
2. At the outset, it may be noted that the defendants are not using the word 'INTEL' as their trademark or trade name. Defendant of Suit No. 209/2004, Intel Engineering Pvt. Limited uses the word 'INTEL' as a part of its corporate name. Similarly, defendant of Suit No. 933/2002 Intel Travels Pvt. Limited uses the word 'INTEL' as a part of its corporate name.
3. Whereas Intel Engineering Pvt. Limited is engaged in the business of re-conditioning and marketing office equipment such as photocopiers, fax machines and printers which contain memory chips and processors for efficiency and to converge with other office equipments eg., computers; Intel Travels Pvt. Limited is engaged in the service industry of tours, travels and hospitality.
4. The 2 suits concern the claim of the plaintiff in the mark 'INTEL' which plaintiff claims is a coined word, not existing in any recognised dictionary of the world. Plaintiff claims registration of the mark 'INTEL' and a design registration in its favor pertaining to the style in which plaintiff writes the word 'INTEL' in respect of goods falling in class-9, including 14, 16, 18, 21, 25 and 28 relating to a wide variety of activities including micro-processors, parts and fittings etc. It is claimed by the plaintiff that on its own and through its subsidiaries, it is engaged, worldwide, in the business relating to computers and parts thereof including semi-conductor devices, memory chips, micro-processors, central processing unit, mother boards, software and telecommunications.
5. Plaintiff claims that the word 'INTEL' is a coined word having a very high degree of inherent distinctiveness.
6. According to the plaintiff, it has used the word 'INTEL' as its corporate name and as a trademark on its products since 1968. The use of the name and the mark 'INTEL' is stated to be first used by the plaintiff in the United States of America and subsequently extended to other countries of the world.
7. According to the plaintiff, its trademark 'INTEL', is well known and has acquired worldwide recognised following the first launch of the micro-processors in the year 1971.
8. Plaintiff claims that since 1972 it had been selling its products in India, though formerly business operations were opened in India in 1988 when a branch office was opened by the plaintiff in the silicon city of Bangalore.
9. Currently, plaintiff states, its brand products are marketed and promoted in India through wholly owned subsidiaries, named, Intel Asia Electronic and Intel Technology Pvt. Ltd.
10. Plaintiff claims that by virtue of prior adoption, prior use and registration, as well as extensive publicity and promotion, the trademark 'INTEL' has earned substantive goodwill and reputation among members of the trade and public which associates the mark/name 'INTEL' with the plaintiff and no one else.
11. Pleading its case against Intel Engineering Pvt. Limited, i.e., the defendant of Suit No. 209/2004, it is stated by the plaintiff that the defendants are carrying business of importing photocopiers, fax machines, laser printers and other office equipment. Additionally, defendant is stated to be providing repair services and maintenance of the office equipments. It is stated by the plaintiff that it is a matter of common knowledge that photocopiers, fax machines as also computers are part of office equipment. Trade channel for the class of common consumers which purchase the product of the plaintiff and said defendant is the same. It is stated that confusion and deception in the course of trade is inevitable, and that the defendant is clearly in cognate and allied business as that of the plaintiff. Plaintiff states that the adoption of the word INTEL as a part of its corporate name by said defendant is tainted with deception. It is further stated that having regard to the highly distinctive nature of the mark, said defendant can have no reason to explain the adoption of the word 'INTEL' as a part of its corporate name. Lastly, it is submitted that the use of the word 'INTEL' by the defendant is likely to dilute the distinctive character of the plaintiffs trademark 'INTEL' and the same is likely to be debased and eroded. Such debasement and erosion is claimed at strike at the very root of the plaintiffs existence. It is stated that the same is not measurable in terms of money and cannot adequately compensate the plaintiff by money.
12. It is stated that the plaintiff became aware of the existence of the defendant in August, 2001 and thereafter plaintiff immediately took action against the said defendant.
13. Pleading a similar case against Intel Travels Limited, the defendant of Suit No. 933/2002, it is stated that activities of the plaintiff have been extending tremendously during the past few decades and are no longer restricted to only computer related goods and services. It is stated that the plaintiff has a broad future vision and is entering into new business at a rapid speed. Therefore, plaintiff claims a legitimate right to enter other businesses and use its mark 'INTEL' in respect thereof.
14. Though, currently not in the business of tours, travels and hospitality, plaintiff claims dilution of its mark by the act of said defendant in using the word INTEL' as a part of its corporate name.
15. Intel Engineering Pvt. Ltd. defends the action, inter alia, by stating that the word 'INTEL' is not a coined word but is an abbreviation derived from the words 'INTernationaF and 'ELectronics'. It is stated that the word 'INTEL' is commonly used for various activities related to international electronics like 'Intel post' (International Electronic Post) meaning - International electronic transmission of messages and graphics by fax or telex. Similarly, the word 'INTEL SAT' - an abbreviation of International Telecommunications Satellite Organisation. It is stated that way back in 1965 a satellite, named, INTELSAT-1 was placed into orbit. Within a few years, large number of INTELSAT satellites were put into orbit. Thus, it is stated that the plaintiff cannot claim any monopoly much less a right that it has coined or invented the word 'INTEL'.
16. It is stated that the said defendant was incorporated in the year 1986 and since then has been carrying on business in India.
17. It is stated that the defendant has spent considerable money in publicity of its name and all along, being fully aware of existence of the defendant, plaintiff never complained. It is stated that since defendant has acquired the reputation of its own, plaintiff wants to striffle the existence of the defendant.
18. Defendant of Suit No. 933/2002 likewise pleads that the word 'INTEL' has not been coined by the plaintiff. It is stated that the said defendant was incorporated in the year 1986 and has spent money on advertisements to build its reputation. It is further stated that the business of the defendant is entirely different than that of the plaintiff and therefore, there is no likelihood of confusion. Said defendant states that it has coined the word 'INTEL' as an abbreviation from the word 'INTernational' and the word 'travEL'.
19. The concept of trademarks and the law relating thereto has well defined contours. Registration of a trademark gives exclusivity to a trader to deal in goods using the symbol or a mark.
20. As law developed, trans-border reputation and a right to protect the mark against dilution has been recognised. It is well recognised today that a person can protect its trademark even in relation to activities not currently in operation by the registered proprietor of a trademark.
21. It is also well recognised that where there is dishonest adoption of a mark by a defendant, delay in bringing an action by the plaintiff would be of no consequences for the reason delay defeating a legitimate claim is rooted in a principle of equity that a person must approach the court at the immediate first opportunity available. There can be no equity in favor of a dishonest person.
22. There being no dispute that the defendants are using the word 'INTEL' as a part of their corporate name and that the plaintiff is the registered proprietor of the word 'INTEL' in respect of goods falling in class 9, 14, 16, 18, 21, 25 and 28, covering a wide variety of activities, I need not discuss the issue of similarity for the reason the word 'INTEL' is bound to be similar with the word 'INTEL'.
23. The traditional concept of business being carried on in market place where consumer could see the face of the seller stands diluted today in as much as huge volumes of business is being transacted through the internet. The internet has become a big bazar. Domain name registrations and protection of a trademark in relation thereto has therefore been recognised by courts.
24. Since I am dealing at a stage of interlocutory application, I would be transgressing my jurisdiction if I analyze the rival versions as if trial has been concluded.
25. As observed by their Lordships of the Supreme Court in the decision reported as 1990 (Supp.) SCC 727 : 1991 (11) PTC 1 (SC) Wander Ltd. and Anr. v. Antox India Pvt. Ltd. interlocutory remedy is normally intended to preserve in status quo the rights of the parties which may appear in prima facie case.
26. Indeed, as observed in the aforenoted report, while considering the protection to be accorded to the plaintiff against injury by violation of its rights for which plaintiff cannot be adequately compensated, the need for such protection must be considered vis-a-vis the need of the defendant against injury resulting from defendant being prevented from exercising its own legal rights for which defendant cannot be adequately compensated. The court must therefore weigh one need against another and determine where the balance of convenience lies.
27. As observed by the Division Bench of this Court in the report published as (1995) 1 AD Delhi 319 Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra:
The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted.
28. Relief of injunction being an equitable relief, delay becomes relevant, but mere delay in bringing an action for infringement of a trademark or for passing off is no ground for refusing an injunction. The grant of injunction becomes necessary if it prime facie appears that the adoption of the mark was dishonest. See Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia and Ors.
29. Acquiescence by itself is also no ground to non suit a plaintiff, if otherwise his claim is found to be genuine. In Willmott v. Barber (1880) 15 Ch.D. 96 Fry, J. said:
It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud and in my views this is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights.
30. Acquiescence is nothing but one facet of delay. If a plaintiff stands by knowingly and lets a defendant build up an important trade until it has became necessary to crush it, the plaintiff would be estopped by acquiescence. It would be a fraudulent conduct to allow knowingly somebody to spend money to build a reputation and then try and crush it.
31. It is important to distinguish between mere negligence and acquiescence as was observed by Sr. John Romilly in Harcourt V White 28 Bear 303. As Explained in Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd. acquiescence is sitting by when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark. It implies positive acts, not mere silence or inaction such as is involved in laches. The observations are another form of knowingly sitting idle.
32. Where defense of delay, laches or acquiescence is put forth, another consideration needs to be put in the scale to see where it tilts. As observed by Romer J. in the matter of an application brought by J.R. Parkington & Co. Ltd. (1946) 63 RPC 171, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance and honesty of user is of importance. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently. Reasons for this stand explained by B.N. Kirpal J. (as his Lordship then was) in the decision reported as Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. In para 31, it was observed:
Even though there may be some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiffs rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. The defense of laches or inordinate delay is a defense in equity. In equity both the parties must come to the Court with clean hands. An equitable defense can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else's right cannot claim the continued misuse of the usurped right.
33. As observed by Kerr in his 'Treaties on the Law and Practice of Injunction' Sixth Edition (pages 360-361):
Mere delay after knowledge of the infringement to take proceedings, not sufficient to call the Statute of Limitations into operation, or where the infringement continues, is not, it seems, a bar to the right of an injunction at the trial. Lapse of time unaccompanied by anything else is, it seems, no more a bar to a suit for an injunction in aid of the legal right than it is to an action deceit.
But delay may cause the Court to refuse an interlocutory injunction, especially if the defendant has built up a trade in which he has notoriously used the mark.
34. As observed by Spry on Equitable Remedies, Fourth Edition, (page 433) specific knowledge on the part of the plaintiff and prejudice suffered by the defendants is a relevant factor to be considered while granting interim relief.
35. Thus, where acquiescence becomes a facet of delay, plaintiff may be declined an interim protection.
36. Acquiescence is attracted where the party complaining sits by or allows another to invade its rights. By permitting the other party to spend money on building its own reputation, it would be against equity to grant relief to such party.
37. Such a conduct is treated by law to be inconsistent with the claim for exclusive rights which are claimed by the complaining party.
38. Actions have been brought against the defendants in the year 2002 and 2001.
39. Defendant of Suit No. 933/2002, Intel Travels Limited was incorporated on 18th June, 1986 evidenced by the certificate of incorporation issued by the Registrar of Companies. It has placed on record advertisements issued by it in the Hindustan Times on 22.6.1989, 3.7.1989, 17.7.1989, 8.11.1989 and thereafter each year till the year 1995 to show that it had been widely advertising itself as a leading travel agent Various letters from the Airlines have been filed showing appreciation of the work of said defendant. Brochures have been relied upon as also magazines which show that the said defendant has acquired considerable reputation in the field of tourism and travels.
40. Said defendant has, prima facie, given good justification as to how it coined the word 'INTEL' to be used as part of its corporate name.
41. Qua said defendant, prima facie, it cannot be said that it has deceptively and surreptitiously adopted the word 'INTEL' to cheat the plaintiff.
42. Relevant for both defendants is to note that when said defendants use the word 'INTEL' as a part of their corporate name, even as per case pleaded by the plaintiff, its presence in India was in the ambrionic stage. At the moment, there is no prima facie evidence to show dishonest adoption by the 2 defendants.
43. Issue needs a trial.
44. Similar is the position of the defendant of Suit No. 209/2004. Said defendant was incorporated on 14th August, 1986 evidenced by the certificate of registration issued by the Registrar of companies. Sales tax, assessment orders and income tax returns show consistent business by the said defendant.
45. Said defendant has additionally given goods reasons as to how the word 'INTEL' was coined not only by said defendant but even by others who were in the business of electronics especially international communication through the medium of electronics.
46. At this stage it cannot be said with certainty that the said defendant dishonestly adopted the word 'INTEL' as a part of its corporate name.
47. I may additionally note when said defendant was incorporated, as in the case of the other defendant, presence of the plaintiff in India was at the ambrionic stage.
48. As observed in the report published as Transmission Corporation of A.P. Ltd. v. Lanco Kondapalli Power Ltd. interim directions ordinarily precede findings of a prima facie case. When existence of a prima facie case is established, the court has to consider other relevant factors, namely, balance of convenience and irreparable injury. While considering the latter, conduct of the parties becomes relevant. If a party has been acting in a particular manner for a long time and has allowed the other to do likewise, the same would have to be weighed.
49. Noting the documents relied upon by the defendants, authenticity whereof, cannot be doubted for the reason they emanate from independent sources, it cannot be ruled out at this stage that delay in bringing action attracts acquiescence on the part of the plaintiff.
50. The telephone directory of the City of Delhi shows as many as 9 corporate entities using the word 'INTEL' as a part of their corporate name.
51. Balancing the claim of the plaintiff and that of the defendants, I am of the opinion that balance of convenience and irreparable injuries leans in favor of the defendants and against the plaintiff for the reason against one defendant action has been brought after 16 years of commencement of business and against the other after nearly 15 years.
52. The usual mantra. Observations and findings in the present order are merely prima facie and not conclusive. Once evidence is led, issue would be decided on basis of proved facts. Nothing contained in the present order would be considered as an expression on the final merits, which, needless to state would be determined on basis of evidence.
53. IA No. 4567/2002 and 11494/2004 are accordingly dismissed.
54. However, there shall be no order as to costs.