India: Tata Sons Granted INR 10,00,000 by Delhi High Court in Infringement Case

Source: www.delhihighcourt.nic.in

The Delhi High Court in the case of Tata Sons Limited & Anr V. Krishna Kumar granted INR 10,00,000 (USD 14307) as damages to the Plaintiffs in light of the Defendants’ illegal and infringing activities.

Brief Facts                 

• Tata Sons Limited (hereinafter referred to as the plaintiff no. 1) is the promoter and principal investment holding company of the House of TATA, which is India's oldest, largest and best-known business conglomerate. It owns 21 tea gardens in the State of Assam and has 21,000 employees in its roll.
• Plaintiff No.2 is a subsidiary of Tata Capital Limited, which in turn is a subsidiary of Plaintiff No.1. is a trusted and customer centric service provider and caters to the diverse needs of the retail, corporate and institutional customers across various areas of business namely Commercial Finance, Infrastructure Finance, Wealth Management, Consumer Loans including distribution and marketing of Tata Cards.
• Plaintiff No. 2 has its websites illustrating its various financial services/ products located at www.tatacapitalfinancialservices.com and www.tatacapital.com
• Krishna Kumar (hereinafter referred to as defendant No.1) is the owner of the Tata Finserve Pvt. Ltd. (hereinafter referred to as defendant No.2).
• The Plaintiff came to know about a domain name www.tatafinserve.com (hereinafter referred to as ‘Impugned Domain Name’) and the website which was parked on the impugned domain name.  
• Also, it was found out that the Defendant No. 1 was using trademark TATA as its corporate name i.e. M/s Tata Finserve Pvt. Ltd.
• Therefore, the Plaintiff filed a suit for permanent injunction, infringement of registered trademark and passing off before the Delhi High Court.

Issue

•  Whether the Defendant is guilty of infringing the Plaintiff’s trademark ‘TATA’?

Plaintiff’s Contentions

•  It was submitted that Plaintiff No.1 was the proprietor of the trademark TATA by virtue of priority in adoption since the year 1917.
• It was also submitted that in addition to the common law rights it is also the registered proprietor of the name/mark 'TATA', 'T within a circle device' as well as several other TATA-formative trademarks in relation to various goods across various classes.

• It was contended that because of the continuous and extensive use of the trademark TATA over a long period of time spanning a wide geographical area coupled with extensive promotion and publicity, the said trademark had been enjoying an unparalleled reputation and goodwill and had acquired the status of a "well-known" trademark. Also, the trademark TATA and the 'T' within a circle Device mark has been acknowledged as a well-known trademark by the Court in various judgments.
• It was alleged that the impugned domain name was registered by the Defendants on September 20, 2014.
• Further, it was alleged that in November 2014, the Defendant Nos. l were portraying themselves to be a part of the Plaintiff No.1, and that they were portraying to be engaged in the business of providing multilayered financial insurance services identical to that of Plaintiff No.2.
•  It was contended that on a bare perusal of the impugned website revealed striking resemblance it had with the Plaintiffs' website namely www.tatacapitalfinancialservices.com and www.tatacapital.com
• It was contended that the Defendants were using the trademark TATA as a part of its domain name and corporate name.

Defendants Contentions

Since the Defendants did not appear before the Court the suit was proceeded ex parte.

Court’s Analysis

• The Court held that the acts of the defendants in adopting and using the identical/ deceptively similar impugned mark and dealing in the goods which are identical to the goods of the plaintiffs certainly has caused irreparable injury to the plaintiffs.
• The Court noted that no further proof is needed if the Defendant’s mark is closely, visually and phonetically similar to that of the Plaintiff.
• The Court held that balance of convenience was in favor of Plaintiff, therefore an order of permanent injunction was passed against the Defendants their partners or proprietors, their officers, servants. Further it held that the plaintiffs have also suffered immense loss to goodwill and reputation and hence are entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages. Hence, a decree for a sum of INR 10,00,000 (USD 14307) in favour of the plaintiffs was passed. The plaintiffs were further awarded an interest @ 10% pa on the damages so awarded from the date of filing of the suit till the date of realization.