Madras High Court
Intel Corporation vs S. Ramanan Director And Anr. on 8 August, 2002
Equivalent citations: 2002(25)PTC457(MAD)
JUDGMENT A. Ramamurthi, J.
1. Original Application No. 276 of 2002 has been filed by the applicant/plaintiff to grant an order of interim injunction restraining the respondents and their men from manufacturing, selling and offering for sale machinery tools, cranes, hoists winches, gear boxes, brakes, industrial products under the name/mark INTEL or using the name as its trading style/trade name and/or e-mail address, website address and/or any other mark deceptively similar to the applicant's trademark INTEL which is likely to cause confusion or deception amounting to passing off of their goods and business as and for those of the applicant, pending disposal of the suit.
2. The case in brief is as follows :- The applicant company on its own and through its subsidiaries is engaged worldwide in the business relating to the internet, electronics, computers and parts thereof including semi conductor devices, memory chips, microprocessors, Central Processing Units being commonly known as the brains of computers, etc. and creating awareness and knowledge of computers under the name and mark INTEL around the world. The applicant since its inception in 1968 has grown to be a truly global corporation and currently employs more than 80,000 people in its various subsidiary companies throughout the world and has global annual turnover of US $30 billion. It has business operation in more than 25 countries covering America, Europe, Asia-Pacific, Japan and India. The applicant today is the largest computer microprocessor manufacturer and distributor in the world. The applicant created history in 1971, when it introduced the world's first microprocessor. The use of the name and mark INTEL was first commenced in USA and subsequently extended to other countries of the world including India. The applicant has successfully, continuously and dramatically improved the computing experience for Personal Computer users by providing and selling faster and more powerful information and data processors from time to time. With the passage of time a wide range of products developed by applicant has gained worldwide acceptable in the name and mark INTEL. In India, the applicant has reimbursed the computer manufacturers such as WIPRO, ZENITH, HCL, VINTRON, ACER, PCS and others in excess of US$ 23 million on advertising that carried INTEL INSIDE logo. The applicant had also obtained registration in India of the INTEL INSIDE & Design under No. 556646 in Class 9 for microprocessors, parts and fittings therefor. The registration has been renewed and subsisting. By virtue of prior adoption, prior use and registration as well as extensive publicity and promotion, the trade mark INTEL has earned substantial goodwill and reputation and members of the trade and public associate the trademark INTENL with the applicant and no one else. Moreover, the consistent superior quality and applicant's efforts to continuously design, redesign, develop and upgrade its products with the changing requirements of industry and public has contributed in building enduring public trust. Though the applicant company formally established its operations in India in 1988 with the opening of its branch office in Bangalore, it has been exporting products to India as far back as 1972. The applicant's products gained substantial popularity in India through various advertisements, publications, articles in newspapers and magazines relating to applicant's products. The applicant's subsidiary company and branch office has spent millions of rupees of popularise its INTEL branded products in India. The applicant has been playing a key role in promoting the computer literacy in India and have set up the INTEL TECHNOLOGY CENTER in Bangalore. In 1989, the applicant company established the "Intel Foundation" for the purpose of developing and funding educational and charitable programme.
3. During the first week of August 2001, the applicant became aware of a company in Chennai trading under the name Intel Tools & Diesets Limited. The 1st respondent is the Director of the 2nd respondent company. They are carrying on the business of manufacturing and dealing in machines, tools and diesets. They are using the mark/name INTEL as part of its trading style. It is without consent, authorisation or licence of the applicant. The applicant sent a notice on 08.09.2001 to cease and desist the same. A reply was received on 20th September 2001 and they refused to comply with the requisitions. According to them, the mark in question is being used in combination with the word TOOLS (INTELTOOLS as one word). The applicant also sent a rejoinder explaining the diverse business activities carried out by the applicant and the use of the mark INTEL by them would cause confusion in the course of trade. The adoption and use of the respondents of an identical name/mark INTEL as its trading style and in relation to industrial products is clearly dishonest with a view to trade upon and benefit from the goodwill and reputation of the mark INTEL. The trademark INTEL is a coined word having no dictionary meaning. It was coined by the applicant in 1968 and has been used continuously and extensively on a wide range of products. The respondents have been using their corporate name as INTEL TOOLS. It is immaterial whether the respondents use INTELTOOLS as a single word or two separate word as their corporate name. It is merely a scheme adopted by the respondents to conceal their dishonest adoption. The trade name of a company acts as an identifying feature of goods/services provided by the company and plays the role of a trademark. The impugned mark is a handle of fraud in the hands of the respondents, who are making a misrepresentation to the innocent buyers that their goods are those of or approved by or somehow connected with the applicant. The consumers are likely to assume that the applicant may have licensed the respondents to manufacture cranes, winches and other industrial products. They have no plausible explanation for adopting an identical trade name but to derive pecuniary benefit. The respondents are likely to not only hurt the public interest but also cause irreperable damage to the applicant's business reputation. The applicant has made out a prima facie case and the balance of convenience is in their favour. The respondents being a later entrant into the business with the identical name is liable to be restrained by an order of interim injunction till the disposal of the suit. The applicant will suffer irreparable loss and hardship if the order of interim injunction is not granted. Hence the petition.
4. The respondents filed a counter affidavit and denied the various averments. There is no cause of action for the suit since they have registered their company as INTELTOOLS AND DIESETS PRIVATE LIMITED, Madras on 14.11.1990 under Section 20 of the Companies Act. They are carrying on business as manufacturers of machinery, tool-makers, brass founders, metal workers, wood workers, etc. The applicant company has not made out a prima facie case. The respondents are not at all using the word INTEL as a trademark, but only part of their company name. Their company products are nowhere connected with the products of the applicant. The applicant is not supposed to use the INTEL in their corporate name in India since the name of the respondents company has been registered earlier. The respondents company is not making wide publicity to collect orders. The applicant's product came to India in 1972 is not known to them. The applicant should have verified with the Registrar of Companies before getting registered their name and trademark. They have invited the applicant for settlement. Their company is using the name only for all official correspondence. They applied for registration with four names on 10.10.1990 and the present name was approved and registered and Certificate of Incorporation was issued on 14.11.1990. They have received orders from the Defence Factory based on the registration. They would incur heavy loss of Rs. 20 lakhs in the event of injunction being continued.
5. The respondents also filed Application No. 1804 of 2002 to vacate the order of ad-interim injunction granted on 29.04.2002 and also filed Application No. 1805 of 2002 to suspend the order of interim injunction. Hence, O. A. No. 276 of 2002 is liable to be dismissed.
6. Heard the learned counsel for the parties.
7. The points that arise for consideration are (1) Whether the applicant/plaintiff company have got prima facie case and the balance of convenience is in their favour ?
(2) Whether the ad-interim injunction granted on 29.04.2002 is liable to be suspended and vacated ?
(3) To what relief ?
8. Points :- The applicant company is engaged in the business relating to internet, electronics, computers and parts thereof under the name and mark INTEL around the world. The use of the trade name/mark INTEL was first commenced in U.S.A. as early as 1968 and extended to other countries of the world including India. This trade name is well known and widely recognised among computer manufacturers. The applicant company had also obtained registration in India of INTEL INSIDE & Design under clause.
9. The learned Senior Counsel for the applicant contended that by virtue of prior adoption, prior use and registration as well as extensive publicity, this trade name has earned substantial goodwill and reputation among the trade and public. The applicant company was formally established in India in 1988, but they were exporting the products to India since 1972. Under the circumstance, their products gained substantial popularity in India through various advertisements, publications relating to their products. They have also spent millions of rupees to popularise their INTEL branded products in India. The trade name has come to be extensively associated with the goods and business of the applicant. Only in August 2001, the applicant came to know that a company in Chennai trading under the name Intel Tools & Diesels Private Limited, in which the 1st respondent is the Director. They are carrying the business of manufacturing and dealing in machine tools and diesets. In spite of the notice, the respondents continue to use the trade name and it will cause confusion and deception in the minds of the pubic and they are also passing off of their goods as that of the applicant.
9. Per contra, the learned counsel for the respondents contended that the 2nd respondent concern is only Intel Tools & Diesets Private Limited and the word IN-TELTOOLS is only a single wood. Moreover, they have also registered the same under the Companies Act as early as 14.11.1990, whereas the trade name of the plaintiff came into existence only subsequently. For more than 11 years, the applicant has not taken any action. Apart from that, the 2nd respondent company manufactures other products and they are not manufacturing the products of the applicant. In short, according to the learned counsel, they are not competing with the business of the applicant and as such, there would be no question of passing off any of their goods as that of the applicant. On the ground of prior user and also on the point of earlier registration and they are manufacturing different products, they cannot be restrained by an order of injunction. The learned counsel further stated that only in some of the letterheads, the word INTEL is given separately and the word TOOLS is given separately. However, in most of the communications sent by the respondents, the name INTEL TOOLS is used only as a single word and hence, there is no possibility of any deception or confusion in the minds of the public.
10. Both parties have filed typed set of documents to establish their case. The documents filed on the side of the applicant indicate that they have commenced the business with the trade name INTEL in U.S.A. as early as 1968 and they have also opened their branch office in Bangalore in the year 1988. There are also records to show that wide advertisement has been given in television as well as newspapers relating to the trade name of the applicant and as such, the public will be aware of the name well anterior in point of time. Although the respondents are manufacturing some other articles, yet, by using the same trade name, their business will be affected. There is an indirect admission in the counter itself about the use of the trade name; but however, they attempted to explain by stating that they are using as a single word and they would not mislead the trade public. The learned senior counsel for the applicant relied on Harrods Limited v. R. Harrod Limited, (Vol. XLI Reports of Patent, Design and Trade Mark Cases 74) that if the name found calculated to cause confusion, interlocutory injunction can be granted.
11. Reliance is also placed on Simatul Chemical Industries v. Cibatul Limited, (DB) that where the name of the Company commencing production subsequently is deceptively similar to that of an existing Company the latter is entitled to restrain the former by injunction from carrying on its business with such a deceptively similar name. Similar view has been reiterated in Hindustan Radiators Co. v. Hindustan Radiators Limited, 1987 PTC 73.
12. It has been held in Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., , wherein it is stated as follows :
"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. Where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused."
Similar view has also been reiterated in Montari Overseas Limited v. Montari Industries Limited, 1996 PTC 142.
13. It has been held in Kirloskar Diesel Recon Pvt. Ltd v. Kirloskar Proprietary Limited, under Trade and Merchandise Marks Act, 1958 that the term 'trade mark' in Section 105(c) would include the trade name also. Similar view has also been reiterated in Caterpillar Inc. v. Jorange, 1998 PTC 31 and ESSEL Packaging Ltd. v. ESSEL Tea Exports Ltd., AIR 1998 Bombay 102 : 1999 PTC (19) 521 (Bom).
14. The learned counsel for the respondents relied on A.G.S.L. Assurance Co. v. N.A. Insurance Co., AIR 1939 Madras 555, wherein it is held that on considering evidence that the use of the defendant's name was not calculated to deceive and so to divert business from plaintiffs to defendants or to cause a confusion between the two companies and the plaintiffs were not therefore entitled to an injunction. There is no dispute about this principle, but it has no application to the case on hand.
15. Reliance is also placed on National Sewing Thread Co. v. James Chadwick & Bros., AIR 1948 Madras 481, wherein it is observed as follows :
"The test in all these cases is whether the general impression left in the mind of a customer who had previously bought the plaintiffs goods is such that he is likely to accept the defendant's goods when they are offered to him in the belief that they are the plaintiffs. When the plaintiffs goods are sold by a certain name and under a certain label the cumulative effect of what is seen and what is heard, provides the criterion.
The fact that the goods of the plaintiff are needed mostly for purposes other than those for which defendant's goods are mainly used, is immaterial when the markets for the two goods overlap in one sphere."
16. Reliance is also placed on Senior Laboratories Ltd. v. Jagsonpal Pharmaceutical Ltd., relating to passing off action that prior user of trade mark has rights over a latter user and letter, registered user is immaterial. There is also no dispute about this principle and the applicability of the same depends upon the facts and circumstances in each case.
17. It is therefore clear from the aforesaid decisions as well as the discussion that the applicant's trade name is widely known in the business circle since 1968; but, however, so far as India is concerned, the branch office was opened as early as 1988 at Bangalore and in view of the wide publicity made in various places in different modes, it is certain that the business people at large would have got knowledge and information about this trade name. Simply because the name of the respondents was registered earlier in point of time, it cannot be said that they have got prima facie case. Considering the overwhelming documentary evidence filed on the side of the applicant, it is clear that the applicant's trade name is popular throughout the world. I am unable to agree with the contention of the learned counsel for the respondents that the word INTEL is only an abbreviation of International. The trade name INTEL has been coined by the applicant and they have widely used the same for a very long time. No doubt, the trade name of the respondents is INTELTOOLS; but by this, it cannot be said that they are entitled to use the same. The products manufactured by the applicant company are marketed under the trade name INTEL and if the same name is used by the respondents also, there is very possibility for deception and confusion in the minds of the public. Apart from that, although the products manufactured by the respondents are a different one from the products manufactured by the applicant, the trade public will be misled and the product of the respondents would be misunderstood as the product of the applicant. The applicant company is a big one when compared to the company of the respondents. It is not difficult for the respondents company to change the name and market their products since it is not a recognised one in the business circle and by this, no prejudice or loss would be occassioned to the respondents. The applicant company has got prima facie case and the balance of convenience is also in their favour. If the order of interim injunction is not granted in favour of the applicant, they would be put to much loss and hardship and as such, the interim injunction already granted has to be made absolute.
18. For the reasons stated above, O.A. No. 276 of 2002 is allowed and interim injunction already granted in made absolute. Applications No. 1804 and 1805 of 2002 are dismissed.