Delhi High Court - Orders
Tata Sons Private Limited vs Mintree Premier Lifestyle And Beauty ... on 24 January, 2024
$~14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 40/2024
TATA SONS PRIVATE LIMITED ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Achuthran
Sreekumar, Mr. Rohil Bansal &
Mr. Apoorva Prasad R., Advs.
versus
MINTREE PREMIER LIFESTYLE AND BEAUTY PVT LTD
..... Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
ORDER
% 24.01.2024 I.A. No.956/2024 (exemption from filing certified, typed copies of dim annexures 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 within four weeks from today or before the next date of hearing, whichever is earlier.
3. Accordingly, the present application is disposed of.
I.A. 957/2024 (exemption from advance service to defendant)
1. As noted under the plaintiffs have served an advance copy to the defendants.
2. For the said reasons, the application is disposed of. I.A. No.955/2024 (seeking leave to file additional documents) 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 31/01/2024 at 20:40:37
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. 958/2024 (exemption from instituting pre-litigation 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. Accordingly, the application stands disposed of.
I.A. 954/2024 (under Order XXVI Rule 9 CPC).
1. This application has been filed for appointment of a Local Commissioner to visit the premises of the defendant.
2. Plaintiff's counsel does not press this application at this stage.
3. Accordingly, the application is dismissed as not pressed.
CS (COMM) 40/2024
1. Let the plaint be registered as a suit.
2. Upon filing of process fee, issue summons to the defendant by 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.
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 31/01/2024 at 20:40:37 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.
3. 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.
4. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
5. List before the Joint Registrar for marking of exhibits on 1 st April, 2024.
6. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
I.A. 953/2024 (under Order XXXIX Rule 1 & 2 CPC).
1. This application has been filed as part of the present suit for permanent injunction, restraining infringement of registered and well- known trademark, passing off, dilution and of plaintiff's mark and other attendant reliefs.
2. Plaintiff is a company incorporated in the year 1917 with its registered office at Mumbai. The plaintiff is a conglomerate of TATA Group of Companies and represents the interest of all TATA Companies, including the reputation of their well-known trademarks. The 'House of TATA' was declared to be India's most valuable brand by 'Interbrand'. The multi brand portfolio of the TATA conglomerate was valued at US$ 26 billion in 2023. The Trademark TATA was derived from the name of the 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 31/01/2024 at 20:40:37 founder of the TATA Group of Companies and the same has been registered and used by multifarious companies under TATA Group over a long period of time. Plaintiff, through its subsidiary TATA Unistore Limited is engaged in the business of e-commerce retail, dealing in multi branded products inter alia beauty & skin care products. The digital commerce initiative of the Tata Group is TATA CLiQ.
3. The grievance of the plaintiff is against defendant, a company which claims to be engaged in the business of manufacturing and selling body and skin care products, having its registered office at Nagpur, Maharashtra. As per records, defendant company was incorporated in the year 2008. Plaintiff's specific grievance relates to infringement of its mark TATA by the defendant by using it on their manicure-pedicure kit "TA TA TAN / Ta Ta Tan" and selling the same on various online e-commerce platforms such as Amazon, Flipkart etc. It is claimed that use of the said mark by the defendants, which is phonetically and literally same/similar to the plaintiff's well-known mark, amounts to dishonest adoption. The photograph of the packaging is extracted below:
4. The plaintiff became aware of the same in December, 2023 having seen a listing on www.amazon.in; screenshot of the same is produced hereinbelow:
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 31/01/2024 at 20:40:37
5. An investigator was deputed who visited the defendant's registered office in Nagpur on 14th December, 2023 and subsequently filed a report. The investigator noticed that huge quantities of the infringing TATA TAN products were stocked in the defendant's said warehouse. When asked to take a sample, a sample was issued to him under an invoice which is extracted below:
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 31/01/2024 at 20:40:37
6. An order was placed on www.amazon.in and the product was delivered to the Delhi address provided by the investigator.
7. Mr. Pravin Anand, counsel for the plaintiff, has drawn attention to the website of the defendant www.mintree.us. By accessing this website, a person located in India as well as abroad can purchase products through the said website. A perusal of the website bears out that the products listed on the said website are under the brand name 'Mintree' and the said product TATA TAN is not listed on the said website, even though the infringing product is available on other e-commerce sites, details of which are listed in para 35 of the plaint.
8. It is stated that the listing on the Amazon website for example, would show that TATA TAN manicure pedicure kit is suffixed with 'Visit Vedi Valley Store' and shown as sold by 'Mintree Premier Lifestyle'.
9. It is pointed out that some device marks of the defendant such as Mintree and Vedic Valley are registered, as borne out of search of the trademark register however, there is no registration of anything related to the said infringing 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 31/01/2024 at 20:40:38
10. Counsel for the plaintiff has also drawn attention to the order passed by a Division Bench of this Court dated 19th September, 2022 in the case of Tata Sons Pvt. Ltd. v. Hakunamatata Tata Founders & Ors., FAO(OS) (COMM) 62/2022 in which it was held as under:
" ... Even otherwise, we do not have any reason to doubt the pre-eminence of the trademarks of the Appellant in India. "
"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. "
" ... The universal popularity of the appellant's trademark is not confined to a few products or services . As stated above, in public consciousness , TATA 's are believed to be ubiquitous across all business. "
11. In these facts and circumstances, this Court is satisfied that the plaintiff has made out a prima facie case for grant of an ex-parte ad interim injunction till the next date of hearing. Balance of convenience lies in favour of the plaintiff, and the plaintiff is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
12. The matter had been listed before this Court on 15th January, 2024 when counsel for the plaintiff had agreed to serve the defendant. The same had been accomplished by sending copy of plaint through email addresses :
[email protected] and [email protected] which were available on MCA websites and defendant's own website.
13. However, no one has appeared on its behalf. Accordingly, till the next date of hearing, ex-parte ad interim injunction is passed against the 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 31/01/2024 at 20:40:38 defendant, and its officers, agents, affiliates etc. restraining them from using the Plaintiff's registered and well-known trademark TATA or the marks TATA TAN including or any other mark deceptively similar to the Plaintiff's well-known and registered trademark TATA, on online and offline platforms. They are further restrained from disposing of any goods of the said product through online and offline medium and from promoting the said product in any manner whatsoever.
14. On steps being taken by the plaintiff, issue notice to defendant through all permissible modes including speed post, courier and email, returnable before the Court on 19th March, 2024. Affidavit of service along with proof thereof be placed on record before the next date of hearing.
15. Reply, if any, be filed within three weeks with advance copy to the counsel for the plaintiff, who may file rejoinder thereto, if any, before the next date of hearing. Defendant shall also disclose in the said reply the details of the stocks which are lying unsold with them and value thereof.
16. Compliance with Order XXXIX Rule 3 CPC be effected within 10 days.
17. List on 19th March, 2024.
18. Order be uploaded on the website of this Court.
ANISH DAYAL, J JANUARY 24, 2024/sm/VP 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 31/01/2024 at 20:40:38