Delhi High Court - Orders
Tata Sky Limited vs S G Enterprises- Tata Sky Sales And ... on 16 January, 2019
Author: Manmohan
Bench: Manmohan
14
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 20/2019
TATA SKY LIMITED ..... Plaintiff
Through: Mr. Tanmaya Mehta, Advocate with
Mr. Raghav Wadhwa, Mr. Siddhant K.
Singh, Mr. Anurag Sahay and
Ms. Mallika Bhatia, Advocates.
versus
S G ENTERPRISES- TATA SKY SALES
AND SERVICES AND ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
ORDER
% 16.01.2019 I.A.No.560/2019 in CS(COMM) 20/2019 Keeping in view the averments in the applications, the plaintiff is exempted from filing the originals/typed/certified/clearer/better copies of documents at this stage.
Needless to say, this order is without prejudice to the rights and contentions of the parties.
Accordingly, present applications stand disposed of. CS(COMM) 20/2019 Let the plaint be registered as a suit.
Issue summons in the suit to the defendants by all modes including dasti, returnable for 25th February, 2019 before the Joint Registrar for completion of service and pleadings.
The summons to the defendants shall indicate that a written statement to the plaint be positively filed within four weeks of the receipt of the summons. Liberty is given to the plaintiff to file a replication within two weeks of the receipt of the advance copy of the written statement.
The parties shall file all original documents in support of their respective claims along with their respective pleadings. In case parties are placing reliance on a document which is not in their power and possession, its detail and source shall be mentioned in the list of reliance which shall be also filed with the pleadings.
Admission/denial of documents shall be filed on affidavit by the parties in accordance with the Delhi High Court Rules List the matter before Court on 28th March, 2019. I.A.No.561/2019 in CS(COMM) 20/2019 Issue notice to the defendants by all modes including email and dasti, returnable for 25th February, 2019 before the Joint Registrar.
It is pertinent to mention that the present suit has been filed for permanent and mandatory injunction, rendition of accounts and damages.
In the plaint, it is stated that the plaintiff is a company incorporated in India in 2001 and is a joint venture between Tata Sons Ltd. and 21 st Century Fox and is engaged in the business of providing Direct-to-Home („DTH‟) services to its customers through its platform "TATA SKY".
It is stated in the plaint that the plaintiff‟s services are one of the most well known and premier services in the country and it enjoys a prime position in the DTH sector. It is stated that it is one of the leading DTH platform service providers in India and has 17 million subscribers.
It is stated that the name of the plaintiff i.e. Tata Sky Ltd, is a combination of the trademarks of Tata Sons i.e. „TATA‟ and „SKY‟ of 21st Century Fox. It is averred in the plaint that the plaintiff vide trademark license agreement dated 01st August, 2006 the plaintiff had been granted licence to use the trademarks TATA and SKY in combination as TATA SKY.
It is stated in the plaint that the plaintiff owns the domain name <tatasky.com> comprising the trade mark/name TATA and manages and operates the website www.tatasky.com It is the case of the plaintiff‟s that the gross revenue from DTH services under the mark TATA SKY for the financial year 2017-2018 was Rs 5738.06 crore.
Learned counsel for the plaintiff states that vide assessment report dated 17th January, 2018, titled "Tata Sky DTH Cyber Intelligence Gathering Online Reputation Management and Brand Protection" by Lucideus, an entity engaged by the plaintiff for online violations, the plaintiff discovered the existence of the defendants‟ numerous offending websites. He states that the defendant nos. 1 to 8 have registered numerous domain names which are deceptively similar to the plaintiff‟s official website i.e. www.tatasky.com. He states that the defendants‟ domain names bear the plaintiff‟s mark TATA SKY and are selling TATA SKY set top boxes, channel packs and connections. The chart summary of the websites of the defendant nos. 1 to 8 (hereinafter referred to as "impugned domain names") is reproduced hereinbelow:-
i. https://www.tataskysales.com, through defendant no. 1 ii. https://www.tataskychennai.com, through defendant no. 2 iii. http://tataskyshop.com, through defendant no. 3 iv. https://tata-sky-mobile.soft112.com, through defendant no. 4 v. http://tataskyshopper.in, through defendant no. 6 vi. https://dthbangalore.co.in, through defendant no. 6 vii. https://dthhyderabad.co.in, through defendant no. 6 viii. http://www.tatadish.com, through defendant no. 5 ix. http://tatasky.dthoffers.com/, through defendant no. 6 x. https://tataskybangalore.weebly.com/index.html,through defendant no. 7 xi. https://tataskymumbai.weebly.com, through defendant no. 7.
Learned counsel for the plaintiff states that on 09th August, 2018, the plaintiff sent a legal notice to the email ID [email protected] which pertains to the impugned website https://www.tataskychennai.com, through the defendant no. 2. However, the said email bounced with the return message "Address not found".
Learned counsel for the plaintiff further states that qua Tech Profuse Pvt. Ltd i.e. defendant no. 6, who is also a Direct Selling Agent of the plaintiff, there is a history of disputes which arose on account of unauthorized registration of domain names by the defendant no. 6. He states that in respect of the unauthorized website, the plaintiff sent a legal notice dated 11th March, 2016 to the defendant no. 6 and subsequently the defendant no. 6 took the necessary steps to de-register the unauthorized domain names bearing the name TATA SKY. He states that the aforementioned dispute is reflected in the plaint of Tata Sky Limited Vs. National Internet Exchange Of India (Nixi) And Ors CS(COMM) 1202 of 2016 pending before a Coordinate Bench this Court.
Learned counsel for the plaintiff states that a perusal of the impugned domain names would indicate that the same have been so named to give the false impression that the defendants impugned domain names and websites are authorized and/or licensed websites of the plaintiff. He further states that the defendants No. 1, 2, 3, 4, 6 and 7 have got the impugned domain names registered with the mala fide intent to encash on the goodwill of the plaintiff. He states that the impugned domain names are likely to cause confusion and create a false impression in the minds of the consumers that the defendants‟ impugned domain names are owned or associated with the plaintiff.
Learned counsel for the plaintiff submits that the very existence of these fake websites and domain names, is unauthorised and in violation of various intellectual property rights of the plaintiff. He further submits that the plaintiff is the only exclusive entity which owns the trademark "Tata Sky" and is the only entity entitled to use or permit use of the said trade mark.
Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of passing off is made out in favour of the plaintiff and balance of convenience is also in their favour. Further, irreparable harm or injury would be caused to the plaintiffs if an interim injunction order is not passed.
Consequently, till further orders, the defendants No. 1, 2, 3, 4, 6 and 7 their agents, employees, assigns are restrained from passing off the trade name and trade mark TATA SKY as their own, whether as part of a trademark, trade name, corporate name, domain name etc., in any manner whatsoever.
The defendants are also restrained from registering or continuing with the existing registration of any domain name which is identical or deceptively similar to the official domain of the plaintiff i.e. www.tatasky.com, including but not limited to the aforesaid impugned domain names.
Further, defendants No.5, 8 and 9 are directed to block the impugned domain names of the defendants No.1, 2, 3, 4, 6 and 7. Let provisions of Order XXXIX Rule 3 CPC be complied within a period of one week by e-mail.
Order dasti under the signature of the Court Master.
MANMOHAN, J JANUARY 16, 2019 js