Delhi High Court
Tata Sons Limited vs Hoop Anin & Ors. on 16 December, 2011
Author: V. K. Jain
Bench: V.K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Pronounced on: 16.12.2011
+ CS(OS) 1104/2008 and IA No. 13685/2008
TATA SONS LIMITED ..... Plaintiff
Through Mr. Pravin Anand with Mr.
Achitan Sreekumar, Advs.
versus
HOOP ANIN & ORS ..... Defendants
Through : Ms. Girija Krishnan Varma,
Advocate for defendant No.4
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
V.K. JAIN, J. (ORAL)
1. The plaintiff-company was established in the year
1917. It is the principal investment holding company of the
Tata Group which had a turnover of Rs.96,000/- crore for
the year 2006-2007 and is stated to be one of India‟s most
trusted business houses. The name TATA is stated to have
been derived from the surname of its founder Mr. Jamsetji
Nusserwanji Tata. For the year 2006, Tata Group was also
ranked as 20th amongst world‟s most reputed companies.
The name TATA is being used by the plaintiff company since
its inception in the year 1917 and it is claimed that on
CS(OS)No. 1104/2008 Page 1 of 12
account of its highly descriptive nature and pioneering
activities of the founder, the name TATA has consistently
been associated with and exclusively denotes the
conglomeration of companies forming the Tata Group,
which is known for high quality of products manufactured
and/or services rendered by it under the trade mark/name
TATA. The House of Tatas comprises of over 100 companies
of which over 50 companies use TATA as a key and essential
part of their corporate name. It is claimed that being
proprietor of the trade mark TATA, the plaintiff company
enjoys exclusive rights in the aforesaid mark. The plaintiff
company claims to be owner of various trademarks which
contain the name TATA as a part of the registered
trademark. It is alleged that on account of continuance and
extensive use of the plaintiff‟s trade mark TATA over a long
period of time spanning a wide geographical area, coupled
with vast promotion and publicity, the said trademark
enjoys an unparalleled reputation and goodwill and has
acquired the status of a "well known" trademark.
2. The defendant no.1, which is carrying the business
under and name and style of „Tata Diamonds‟ is alleged to
be engaged in the business of diamonds and diamond
CS(OS)No. 1104/2008 Page 2 of 12
jewellery. He has also registered a domain name
"tatadiamonds.com". The defendant no.3, public domain
registry is state to be the sponsoring Registrar of the domain
name, whereas, defendant no.4 is stated to be providing web
hosting service for the domain name.
3. The case of the plaintiff is that by using the word
„Tata‟, which is phonetically, visually and structurally
similar to the plaintiff‟s registered trademark, the defendant
is infringing its trademark nos. 562929, 562469, 562934,
563533, 563539, 563544, 563548, 563804, 562939 &
838430. It is also alleging that use of the word Tata as part
of the trade mark/ trade name/web name is likely to cause
confusion and deception in the mind of the public, which
may be misled to assume that the defendant has a
connection with the House of Tatas, in fact there being no
connection or affiliation.
It is also alleged that these trade activities of
defendant nos. 1 & 2 under the impugned name are likely to
cause injuries in the business, goodwill and reputation,
which the mark „TATA‟ enjoys in a number of activities.
The plaintiff has, therefore, sought an injunction restraining
the defendant for using any trademark/trade name/web
CS(OS)No. 1104/2008 Page 3 of 12
name, of which word „TATA‟ forms. The plaintiff has also
sought an order directing transfer of domain name
"tatadiamonds.com" to it. The plaintiff has also claimed
damages amounting to Rs 20,05,000/- besides rendition of
accounts in respect of damages caused to it on account of
unauthorized use of the impugned business name and
domain name by defendant no 1.
4. The defendant nos. 1 to 3 were proceeded ex-parte
vide order dated 08.8.2008. However, during the pendency
of the suit there was a settlement agreement dated 7 th
October, 2011 between plaintiff and defendant No.4
whereby defendant No.4 surrendered the domain name
www.tatadiamonds.com and undertook not to use or tamper
with the aforesaid domain name, subject to plaintiff not
pressing for any damages or payment against it and not to
press or continue the suit against it. In view of the
settlement agreement, the name of defendant No.4 is deleted
from the array of defendants.
5. The question whether „TATA‟ is a well known mark
or not came up for consideration before this Court in CS(OS)
No. 264/2008 & CS(OS) No. 232/2009, decided on 28 th
March, 2011. This Court after consideration the law
CS(OS)No. 1104/2008 Page 4 of 12
relating to well known marks inter alia held as under:
Considering that (a) the mark TATA
whether word mark or device or in
conjunction with other words is being
used for last more than 100 years, in
respect of a large number of goods and
services, (b) Tata Group, which is
probably the oldest and largest
industrial and business conglomerate
having turnover of Rs.96,000 crores in
the year 2005-06, Tata Group
comprises a number of large companies,
millions of consumers are using one or
more Tata products throughout India,
but also in other countries, (c) there are
more than hundred registrations of the
trademark TATA either by way of word
mark or device or use of the name TATA
with other words, (d) the Courts having
in a number of judgments/orders
recognized TATA as a well known mark,
(e) there is no evidence of any other
person holding registration of or using
the trademark TATA and (f) the
reputation which companies of TATA
group enjoys not only in India but also
in many other countries, it is difficult to
dispute that the trademark TATA is a
famous and well known brand in India.
I, therefore, have no hesitation in
holding that the mark TATA whether
word mark or device or when use in
conjunction with some other words is a
well known trademark within the
meaning of Section 2(z)(b) of the
Trademarks Act, 1999. The use of the
trademark TATA in relation to any
goods or services is, therefore, likely to
be taken as a connection between
house of TATAs and the goods or
services, which are sold under this
trademark or a trademark which is
CS(OS)No. 1104/2008 Page 5 of 12
similar to it.
6. In the case before this Court, defendant No.1 Mr.
Hoop Anin seems to be carrying business by selling
diamonds and/or diamond jewellery under the name and
style of M/s Tata Diamonds. The word mark „TATA‟ is
registered in favour of the plaintiff company vide registration
No. 562469 in Class-14 (Exh. PW-1/16) and the products
covered by registration include jewellery and precious
metals. Defendant No.1 has also used the mark „TATA‟ as a
part of the domain name www.tatadiamonds.com and
thereby infringed the registered trademark of the plaintiff.
The plaintiff is entitled to injunction against use of the mark
„TATA‟ by the defendant for two reasons firstly because of
„TATA‟ being a registered trademark in Class-14 in respect
of jewellery and precious metals and secondly because of
„TATA‟ being a well known mark. Defendant No.1 by using
the name „TATA DIAMONDS‟ as his business name and
www.tatadiamonds.com as his web name has included the
whole of the registered and well known trademark „TATA‟ as
a part of his business name and domain name. Mere
suffixing the words „Diamond‟ with „Tata‟ would not take the
CS(OS)No. 1104/2008 Page 6 of 12
case of defendant No.1 out of purview of Sections 29 (1) (2)
and (5) of the Trademarks Act. It can hardly be disputed
that considering the extent to which the mark „TATA‟ is
known, not only in India but in other countries as well,
anyone coming across the business name „Tata Diamonds‟
and/or domain name www.tatadiamonds.com would
assume that defendant No. 2 is a business entity from the
House of Tatas, or defendant No.1 has either some business
connection with the House of Tatas or that they have
licensed him to carry the business which he carries on
under the name M/s Tata Diamonds or that there is some
kind of a collaboration between him and Tata Sons and that
is why name „Tata‟ is being used by him as a part of his
business name and his domain name. Besides diluting the
distinctiveness of the trademark „TATA‟, this is also likely to
cause confusion amongst the persons who come across the
aforesaid business name and domain name and as regards
source of the goods being sold under the name Tata
Diamond, and/or on the website www.tatadiamonds.com, in
fact, would amount to causing a deception on them by
inducing them to believe that defendant No.1 has some kind
of a business connection or association with the House of
CS(OS)No. 1104/2008 Page 7 of 12
Tatas. Since the defendant has not come forward to contest
this suit, the presumption is that his use of the mark Tata
as a part of his business name and web name is not bona
fide and rather deliberate, intended to encash upon the
brand equity and goodwill which the mark TATA enjoys in
the market.
7. A perusal of Exh. PW-1/23 which is a print-out
from the website page of defendant No.1 would show that
defendant No.1 has given a hyperlink to the website of the
plaintiff www.tata.com from his website and is also using
the device containing the word Tata and „t‟ in a circle device
both of which are registered marks of the plaintiff. The
device of the plaintiff, which can be seen on the web site of
defendant No.1 (Exh. PW-1/23), is registered in favour of
plaintiff vide registration No.838430 (Exh. PW-1/14) in
Class-14. Thus, defendant No.1 has gone to the extent of
making use of the registered device of the plaintiff without
any prefix or suffix to it. Defendant No.1 thus had indulged
in, what the learned Counsel for the plaintiff terms as,
"framing".
8. For the reasons given in the preceding paragraphs
defendant No.1 needs to be restrained from using the
CS(OS)No. 1104/2008 Page 8 of 12
business name Tata Diamonds or any other business name
which would constitute infringement of the trademark Tata.
He also needs to be restrained from using the domain name
www.tatadiamonds.com or any other web name which
would constitute infringement of the trademark Tata of the
plaintiff. Defendant No.1 has also to be restrained from
using the „T‟ in a circle device registered vide registration No.
838430 (Exh. PW-1/14).
9. The plaintiff has also claimed Rs.20,05,000/- as
damages from defendants No. 1 & 2. Dealing with the
damages, this Court in Tata sons Ltd. v. Manoj Dodia &
Ors. (supra) inter alia observed as under:
The promotion and building of a Trade
Mark, particularly a mark which is used
in relation to a variety of good and/or
services, requires considerable efforts,
skill and expenses. The brands are not
built in a day, it takes years to
establish a brand in the market.
Moreover, brand equity can be earned
only if the quality of the product sold
and/or services provided under that
name are consistently found to be of
superior quality. No amount of
marketing efforts and promotional
expenditure can build a brand,
particularly in the long run, if the quality
of the product/service does not
commensurate with the marketing
efforts. The brands, particularly well
CS(OS)No. 1104/2008 Page 9 of 12
known brands, themselves are now
becoming highly valuable and in fact
are being sold as standalone products.
The companies which invest heavily in
brand building and back them up by
quality products are bound to suffer not
only in reputation but also in financial
terms, on account of diminution in the
value of the brand as well as sale of
their products/services, if the brands
are not given adequate protection by the
Courts, by awarding punitive damages
against the infringers. Also, a soft or
benevolent approach while dealing with
such persons, is also likely to
prejudicially affect the interests of the
consumer, who may pay the price which
a premium product commands in the
market, but may get an inferior product
on account of such unscrupulous
persons using trademarks of others for
their own commercial benefit, at the cost
not only of the trade mark owner, but
also the consumer who purchases their
product.
Another purpose behind awarding
punitive damages is to deter those who
may be waiting in the wings and may
be tempted to imitate the trade mark of
others, in case those who are sued
before the Courts are not made to pay
such damages as would really pinch
them. Awarding token damages may,
therefore, not serve the desired purpose.
Our country is now almost in
the league of advanced countries. More
and more foreign companies are
entering our markets, with latest
products. They would be discouraged
to enter our country to introduce newer
products and make substantial
investments here, if the Courts do not
CS(OS)No. 1104/2008 Page 10 of 12
grant adequate protection to their
intellectual property rights such as
patents, trademarks and copyright.
Most of the products sold by these
companies are branded products, the
marks on them having trans-border
reputation and enjoying tremendous
brand equity. It is, therefore, becoming
increasingly necessary to curb such
trade mark piracies lest they drive
away the huge foreign investment our
country is attracting. The Court should
not give premium to dishonesty and
unfair practices by those who have no
compunctions in blatantly using the
trademark of others for making
unearned profits.
10. In the facts and circumstances of the case, I feel
that punitive damages amounting to Rs.5 lac should be
awarded to the plaintiff company against defendant No.1.
As far as defendant No.2 is concerned, since it is not a
legal entity but is only a trade name adopted by defendant
No.2 its name is liable to be struck off from the array of
defendants. No relief against defendant No.3 has been
pressed.
ORDER
For the reasons given in the preceding paragraphs, defendant No. 1 is restrained from using the business name „Tata Diamonds‟ or any other business name which would CS(OS)No. 1104/2008 Page 11 of 12 constitute infringement of the trademark Tata. He is also restrained from using the domain name www.tatadiamonds.com or any other web name which would constitute infringement of the trademark TATA of the plaintiff. He is restrained from using the „T‟ in a circle (device) registered vide registration No. 838430 (Exh. PW- 1/14). The plaintiff is also awarded damages amounting to Rs 5 lac against defendant No. 1. The names of defendants No. 2 and 4 are deleted from the array of defendants. No relief is granted against defendant No. 3.
Decree sheet be prepared accordingly.
(V.K. JAIN) JUDGE DECEMBER 16, 2011 ka/vn CS(OS)No. 1104/2008 Page 12 of 12