Tuesday, 20 March 2018

India: Delhi High Court grants injunction for unauthorized use of the mark ‘Tata Water Plus’

The Hon’ble High Court of Delhi on November 9, 2017, in the case of Tata Sons Limited & Ors. vs. M/S Mayuri Beverages held against Mayuri Beverages and in favor of Tata Sons Limited for passing off packet water pouches containing the mark “TATA Water Plus” which is the trademark of the  Tata Sons Limited is the proprietor and owner.

Brief background

  • Tata Sons Limited (hereinafter referred to as ‘Plaintiff no. 1’) is the holding company of the renowned Tata Group and holds the bulk of shareholding in these companies. The Company’s name is derived from the surname of the Plaintiff’s founder, Shri Jamsetji Nusserwanji Tata that is a rare patronymic name possessing the distinctiveness of an invented and coined the word.
  • Plaintiff No.1 has continuously and consistently been using the trademark/trade name ‘TATA’ and its variations thereon, since its inception in the year 1917, whereas the use of the name/trade mark TATA by the predecessors-in-business of the Plaintiff No.1 company dates back to the year 1868.
  •  Plaintiff No.2 company is an associate company of Plaintiff no.1 which focuses on branded natural beverages such as tea, coffee and water. Nourish Co Beverages Ltd. (hereinafter referred to as ‘Plaintiff no.3’) was created in light of a joint venture between Plaintiff no.2 and PepsiCo India Holdings Private Limited.
  • Plaintiff no. 1 is the proprietor of trademarks ‘TATA’ and ‘TATA WATER PLUS’ in respect of Nutrient Water which seeks to provide essential micronutrients.
  •  Plaintiffs No. 2 and 3 were given permission by Plaintiff no. 1 to use the trademark ‘TATA WATER PLUS’ by vide license agreement dated August 26, 2011. 
  • In September 2016, the Plaintiffs learnt that Mayuri Beverages (hereinafter referred to as ‘the Defendant’) was manufacturing, selling and distributing package drinking water pouches under the name ‘TAZA WATER PLUS’.
  • Thus, the Plaintiffs subsequently brought upon a suit before the Delhi High Court (hereinafter referred to as ‘the Court’) seeking permanent injunction for infringement along with an application for appointment of a Local Commissioner.
  • The Local Commissioner, appointed by the Court by an order dated October 24, 2016, also confirmed the infringing activities of the Defendant entity and its proprietor in its findings.  
Infringing Marks

Plaintiff
Defendant

Plaintiff’s Contentions:
  •  The Plaintiffs contended that the mark ‘TATA’ is derived from a rare name possessing the distinction of an invented word. It claimed to be using the mark since 1917. It further claims that due to continuous use of this trademark over a long period spanning a large geographical area and extensive publicity, the trademark has gained substantial amount of goodwill. Thus, the trademark has acquired the status of a ‘well-known trademark’ in India.
  •  It was also contended that similarity in packaging of ‘TAZA WATER PLUS’ made the malafide intention of the Defendant clear as someone trying to pass off their product as the ones made by the Plaintiff.
  •  It alleged that the Defendant has adopted an identical trade-dress for its products as that of the Plaintiffs i.e. the brown and blue strips and even the font size and style in which the words appear on the product packaging of their product ‘TATA WATER PLUS’.
  • It was further alleged that the illegal activities of the Defendant have greater magnitude of negative consequences as this is drinking water, which being of inferior quality can lead to health issues and even prove to be fatal.
  • It submitted that the activities of the Defendant have resulted in the loss of the Plaintiffs reputation and in weakening of the value and strength of its brand name and trademarks.
Defendant’s Contentions:

  • As the Defendant did not appear before the Court despite service, the suit proceeded ex-parte.
Court’s Decision

  •  Hon’ble Mr. Justice Manmohan of the Delhi High Court passed a judgement in favor of the Plaintiffs and against the Defendant, as the Plaintiff’s contentions are uncontroverted.
  •  It was held that the Plaintiffs are entitled to a permanent injunction. However, the Court refrained from granting damages as the Plaintiffs could not establish the quantum of damages/costs incurred by it.
Our research team has compiled together a list of TATA formative marks belonging to Tata Sons Limited in Class 32 as per the records of the Trademarks Registry listed below:



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