Manmohan Singh, J.
I.A. No. 266/2014 (exemption)
Exemption allowed, subject to just exceptions.
The application is disposed of.
I.A. No. 267/2014 (u/s. 148 CPC)
This is an application filed by the plaintiff u/s 148 CPC seeking time to file the deficient Court fee. Learned counsel for the plaintiff states that the plaintiff undertakes to file the court fee within four days. Let the same be done within four days.
In view of the above, the application stands disposed of.
CS(OS) No. 46/2014
Issue summons to the defendants, on filing of process fee and Regd. A.D. Covers within ten days, returnable on 21st March, 2014. Dasti in addition.
I.A. No. 265/2014 (for stay)
1. Issue notice to the defendants, returnable on 21st March, 2014. The abovementioned application has been filed by the plaintiff under Order XXXIX Rules 1 & 2 read with Section 151 CPC. In view of the facts stated in the plaint and the application as well as documents placed on the record, Mr. Pravin Anand, learned counsel for the plaintiff is pressing for an ad-interim injunction order.
2. The plaintiff has filed the suit for permanent injunction against the defendants restraining infringement of registered trademarks, passing off, dilution and tarnishment of trademark, damages, rendition of accounts, delivery up, transfer of domain name etc.
3. Plaintiff''s Case:
(i) The plaintiff, established in the year 1917 as a body corporate, is the promoter and principal investment holding company of the House of TATA, which is India''s oldest, largest and best-known business conglomerate, with a turnover of about US$ 100 billion (around Rs. 4,757.21 billion) in 2011-12, with 58 percent of this coming from businesses outside India. The plaintiff is one of India''s most trusted business houses and the name/trademark TATA, derived from the surname of the founder Jamsetji Nusserwanji Tata, is a household name synonymous with excellence in several fields of business activity.
(ii) The plaintiff and other Tata companies are India''s oldest and largest private-sector employer, consisting of over 100 major operating companies, 28 of which are listed on stock exchanges and they have a combined market capitalization of about $84.28 billion (as on July 04, 2013), and a shareholder base of about 4 million. The Tata companies have employed over 425,000 people worldwide. The TATA name has been respected in India for 140 years for its adherence to strong values and business ethics.
(iii) The House of TATA was ranked 13th in the list of World''s 50 Most Innovative Companies by Business Week, for the year 2009. Further, the TATA brand has also been ranked 39th by Brand Finance, (an independent company focused on the management and valuation of brands) Global 500 Report March 2013. For the year 2009, the plaintiff was ranked as the world''s 11th most reputed company according to a study compiled by United States based Reputation Institute. Documents pertaining to the "well known" status of the TATA Name/Mark and the reputation and goodwill enjoyed by the plaintiff have been filed in the present proceedings.
(iv) The plaintiff is the proprietor of the trademark TATA by virtue of priority in adoption, long, continuous and extensive use and advertising, and the reputation consequently accruing thereto in the course of trade. The plaintiff and companies promoted by them have exclusively used TATA as a trademark so that it is uniformly perceived as indicative of the source of the products/services i.e. the plaintiff and the companies promoted by the House of TATA. The members of the House of TATA are acknowledged to be the standard bearers of excellence in quality and business ethics in India as well as abroad. The plaintiff being the proprietor of the name/trademark TATA holds exclusive rights in the said trademark and is entitled to take action against unauthorized use thereof by third parties for any goods or services or in any other manner.
(v) In addition to the common law rights that have accrued to the plaintiff by virtue of the aforesaid facts, it is also the registered proprietor of several TATA-formative trademarks in relation to various goods across various classes of the Fourth Schedule of the Trade Marks Rules, 2002. A tabulated list of the plaintiff''s trademark registrations is filed along with representative copies of a few trademark registration certificates. By virtue of the said registrations, the plaintiff has the exclusive right to use the trademark TATA in relation to the goods covered thereunder and to obtain relief in respect of the infringement of the registered trademarks. The plaintiff also owns trademark registrations for the word TATA in over 50 countries besides India. Copies of registration certificates etc. of the trademarks owned by the plaintiff Company are filed in the present proceedings.
(vi) The plaintiff is also the proprietor of the trademark TATA as well as the "T within a circle" devices as shown below:
(vii) The plaintiff is the proprietor of several trademarks comprising/containing the word TATA as well as the "T within a circle" device under various classes. Further, the plaintiff also has copyrights to various pictorial representations of the "T within a Circle device" Copies of Certificate for use in legal proceedings and copies of certified true copies of trademark registration certificates etc. of the trademarks owned by the plaintiff Company are filed in the present proceedings.
(viii) As a result of the continuous and extensive use of the plaintiff''s trademark TATA over a long period of time spanning a wide geographical area coupled with extensive promotion and publicity, the said trademark enjoys an unparalleled reputation and goodwill and has acquired the status of a "well-known" trademark. It is submitted that a reputed and well known trademark is one that embodies an aura of pre-eminent excellence and is recognized irrespective of the class of goods or services for which it is used and the plaintiff''s trademark TATA wholly qualifies for this distinction. This is substantiated inter alia by the fact that this Court has consistently protected the trademark TATA against misuse by various persons/firms/companies engaged in manufacture and/or sale of goods as diverse as pressure cookers, lottery tickets, cutlery, newspapers, etc. and for online activities or mere registration of domain names.
(ix) Tata Sons Ltd. is the owner of the well known trademark TATA and the ''T'' within a circle Device mark. The instant suit has been filed seeking an order of permanent injunction restraining infringement of registered trademark, passing off, dilution and tarnishment of trademark, damages, rendition of accounts, delivery up, transfer of domain names etc. The plaintiff''s trademark TATA and the ''T'' within a circle Device mark have been acknowledged as a well known trademark by this Court in various judgments and hence the trademark TATA and the ''T'' within a circle Device mark have been included in the list of well-known trademarks issued by the Trade Marks Registry. The same has been placed on record from page Nos. 437 to 446.
4. The present case pertains to the impugned domain names www.tataagro.com, www.tataagro.biz www.tataagro.org and www.tataagro.net and the websites which are parked on the said domain names as well as the defendants'' use of the well-known trademark TATA of the plaintiff as its corporate name i.e. TATA AGRO HOLDING. All these domain names have been registered by the defendants on the same date i.e. 31st July 2013.
5. Sometime during early January 2014, the plaintiff was first informed by one of its Group Company regarding the impugned domain names www.tataagro.com, www.tataagro.biz www.tataagro.org and www.tataagro.net of the defendant Nos. 1 and 2.
6. Case against the Defendants
(a) The defendant No. 1, i.e. Gina Kilindo is the owner of the defendant No. 2 i.e. Tata Agro Holding Ltd. and also the registrant of the impugned domain names www.tataagro.com, www.tataagro.biz www.tataagro.org and www.tataagro.net.
(b) It is alleged by the plaintiff that the plaintiff was further informed that the defendant Nos. 1 and 2 are trying to portray to unwary customers and the public at large that they are involved in the business of providing expertise in relation to investment distribution around various sectors such as agriculture, poultry, and related products and services. In this regard, the defendants have also been seeking financial investment from unwary customers and public at large. People can contact the defendants on its website www.tataagro.com through email or even through an online chat service which is provided on the said website. The defendants also have pages on popular social networking websites such as Facebook and Twitter. Printouts of the pages from the defendants'' website www.tataagro.com as well as from its Facebook and Twitter pages are filed in the present proceedings.
(c) The defendant Nos. 1 & 2 have provided the following details of its bank account to one of plaintiff''s representatives when he sought the same through the online chat service provided on the defendants'' website www.tataagro.com:
� BENEFICIARY: Tata Agro Holding ltd
� IBAN: L18908803103442950000
� ACCOUNT: 103442950000
7. A mere perusal of the defendants'' website www.tataagro.com would reveal about activities of the defendants in the following manner, details of which are available as per documents placed on record by the plaintiff:
a) The defendants have used the plaintiff''s well-known trademark TATA as part of all of its four domain names as well as part of its corporate name i.e. Tata Agro Holding Ltd.
b) The defendants have also used the plaintiff''s "T within a circle" Device mark.
c) The defendants have copied and unauthorizedly used the plaintiff''s slogan i.e. "Leadership with Trust".
d) The defendants have further stated on its website that Mr. Amit Dalal is its CEO and a photograph of him along with his wife has also been displayed on the website www.tataagro.com. It is noteworthy to mention here that Mr. Amit Dalal is the Executive Director of Tata Investment Corporation Ltd. (a subsidiary of the plaintiff) and a Director on the Board of other plaintiff Group companies and is also associated with certain Charitable Institutions. It is also pertinent to note that Tata Investment Corporation Ltd. is a company listed on the National Stock Exchange as well as the Bombay Stock Exchange with significant long term investments in the equity of TATA as well as non TATA Companies. The photograph of Mr. Dalal and his wife may have been taken while being used for his Whatsapp profile page. The defendants have even forged the signature of Mr. Amit Dalal. This very clearly illustrates the malafides of the defendant Nos. 1 & 2 as well as the magnitude of the infringing/illegal activities of the defendants.
e) The defendants'' malafides are also evident from the fact that they have malafidely mentioned their contact email address as info@tataagro.com.
8. Further, the remaining websites of the defendants i.e. www.tataagro.biz, www.tataagro.org and www.tataagro.net have the same page displayed which states that the defendants are engaged in the following businesses:
a) Tata Sky DTH
b) Tata Ace Price
c) Tata Photon Plus
d) Tata Auto
e) Tata Indica Vista
f) Tata Motors
g) Tata New Cars
h) Tata Insurance
i) Tata Mutual Funds
j) Tata Tucks
k) Tata Safari 4x4
l) Tata Indigo
m) Tata Hotel
n) Tata Water Purifier
9. Even the name of the Ex-Chairperson of the plaintiff i.e. Mr. Ratan Tata has also been mentioned on the said websites. If one was to click on the above options, he will be redirected to other online pages, which provide similar services. The relevant printouts from the websites of the defendants located at www.tataagro.biz, www.tataagro.org and www.tataagro.net are filed in the present proceedings.
10. In view of the above, it is apparent that the defendant Nos. 1 and 2 are portraying to the unwary public and gullible customers that they are associated/endorsed by the plaintiff and such unwary public and gullible customers would part away with their hard earned money to the defendants.
11. Having regard to the fact that the trademark TATA of the plaintiff is a ''well-known'' mark enjoying an expansive reputation and goodwill breaking barriers of geography, language, ideology and class, and that the TATA companies promoted by the plaintiff and their subsidiaries/associates are engaged in a wide spectrum of activities using the trademark TATA and the said trademark has come about to be exclusively recognized as the source indicator of the goods and business of the plaintiff and companies promoted by it, the use of an identical trademark by the defendants creates confusion and deception in the minds of the purchasing public and members of the trade who will be misled into purchasing the defendants'' products enabling unjust enrichment of the defendants at the plaintiff''s and the consumers'' expense. The use of the plaintiff''s mark/name TATA by the defendants also amounts to false trade description as defined under the provisions of the Trade Marks Act, 1999, inasmuch as it induces the consumers and members of trade to falsely believe that:
a) The defendants have a direct nexus or affiliation with the plaintiff or the House of TATA; or
b) The defendants have been granted a license to use the trademark TATA in relation to this class of products; or
c) The business of the defendants has been endorsed by the plaintiff.
12. The said illegal trade activities of the defendants are bound to cause incalculable harm and injury to the business, goodwill and reputation of the plaintiff. All profits earned by the defendants in pursuance of its illegal activities are the plaintiff''s losses and amount to unjust enrichment. A strong prima-facie case is made out.
13. The plaintiff has been able to make out a strong case for the grant of an ex parte order as balance of convenience lies in favour of the plaintiff and against the defendants. In case, an interim order is not passed, the plaintiff would suffer an irreparable loss and injury. Thus, till the next date, the defendants, their partners or proprietors, as the case may be, their officers, servants and agents are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any business whatsoever under the corporate name Tata Agro Holding Ltd. and the domain names domain names www.tataagro.com, www.tataagro.biz, www.tataagro.org and www.tataagro.net and/or using any trademark/description/name/device/domain name bearing the trademark TATA/the "T within a circle" device/the slogan "Leadership with Trust"/the name of the plaintiff''s former Chairman or other Officers and/or any mark/name/slogan confusingly or deceptively similar to the plaintiff''s trademark TATA/"T within a circle" device mark amounting to infringement and passing off of the registered trademarks mentioned in the list of TATA word mark registrations and the "T within a circle" device mark registrations filed in the present proceedings. They are also restrained from engaging in any act whatsoever that will result in the dilution and tarnishment of the well-known trademark TATA and the "T within a circle" device mark of the plaintiff. The ex parte ad interim injunction is also passed against the defendants to be in force during the pendency of the present proceedings, directing the defendants to immediately take down their Facebook, Twitter and such other web pages and also directing the impugned domain names www.tataagro.com, www.tataagro.biz, www.tataagro.org and www.tataagro.net to be put on hold. Compliance of Order XXXIX Rule 3 CPC be made within ten days.
