IN THE HIGH COURT OF DELHI AT NEW DELHI

Judgment delivered on: 09.10.2017

CS(OS) 2297/2011

TATA SONS LIMITED                                                          ….. Plaintiff

                                   versus

SUNIL KUMAR JANGRA & OTHERS                             ….. Defendants

CORAM:

HON’BLE MR. JUSTICE SANJEEV SACHDEVA

Head Note: Trademark and Domain Name  infringement- plaintiff being registered proprietor of the trademark – produce registration certificate – TATA Sons by virtue of priority in adoption, long, continuous and extensive user and having vast advertising and reputation – having course of trade in most of the spear – registered in more than 50 countries – plaintiffs’ claims to be established in 1917 one of the oldest, largest and best – known conglomerate with a turnover of over US $ 70.8billion for the financial year 2008-09- – 100 major operation companies, 28 of which are publicly traded and employing over 3,63,000 peoples- defendant using the www.tatasafe.com and trademark as Tata Safe Packers and Movers involving in the business of providing transport, packaging and storage of goods, travel arrangement, packaging moving services under the above said domain name – plaintiffs came to know above the above defendant and conducted a preliminary investigation report and same was submitted to court – defendant did not contest the case and remained ex-party – Held the defendant is infringing the trademark of the plaintiff and granted permanent injunction against the defendant along with cost of the suit and transfer of the domain name to plaintiff.

 JUDGMENT

(ORAL) CS(OS) 2297/2011 & IA No.14935/2011(O.XXXIX R.1 & 2 CPC)

  1. Learned counsel for the plaintiff submits that the Registration Certificates for use in legal proceedings have been issued by the Trade Mark Registry and the same have been filed on 25.10.2016.
  2. Since the Certificates are issued by the Trade Mark Registry in terms of Section 137 of the Trade Marks Act, 1999, certified copies of the same are produced in Court and tendered in evidence. The same are exhibited and marked Exhibit P-1 and Exhibit P-2 (@ page 49 and page-50 of the pleadings file).
  3. The present suit has been filed by the plaintiff, inter alia, seeking a decree of permanent injunction restraining the defendants from directly or indirectly dealing in the business of providing transport; packaging and storage of goods; travel arrangement, packaging / moving services under the domain name www.tatasafe.com and/or using any trademark/ description/name/device bearing the trademark TATA or any other mark which is deceptively similar to the plaintiff‟s trademark TATA. The plaintiff also prays for an order for rendition of accounts of profits earned by the defendants and a decree of Rs.20,05,000/- towards damages against the defendants.
  4. Although the defendants were served, however, they did not enter appearance and did not participate in the present proceedings. Accordingly, they were proceeded ex-parte on 25.07.2016.
  5. Mr. V. Gurumoorthi (PW1) has filed an affidavit affirming to depose on behalf of the plaintiff. Ex. PW-1/1 is the certified copy of the General Power of Attorney issued by the plaintiff, the resolution of the Board of Directors dated 14.09.2001 is Ex.PW-1/2 inter alia, authorizing PW-1 to take any steps that are necessary in furtherance of the final disposal of the present proceedings.
  6. The facts that emerge from the affidavit of PW1 are that the plaintiff, established in the year 1917, is the principal investment holding company of the TATA Group, which is stated to be India’s oldest, largest and best-known conglomerate, with a turnover of over Rs.325,334 crores (US$70.8 billion) for the financial year 2008-09. The Plaintiff is stated to be India‟s oldest and largest private sector consisting of over 100 major operating companies, 28 of which are publicly traded, and employing over 3,63,000 people.
  7. It is affirmed on oath that the plaintiff has been continuously using the trademark and trade name TATA since its inception. The use of the trademark and name TATA by the plaintiff’s predecessors in its business dates back to the year 1868. It is stated that the trademark and name TATA is stated to have has since its adoption been extensively and continuously used by the plaintiff, by virtue of which the trademark TATA acquired an excellent reputation from the very beginning and down the decades, the said name has consistently been associated with, and exclusively denotes the conglomeration of companies forming the TATA Group.
  8. The plaintiff claims to be 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. In addition, the plaintiff 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. The plaintiff also owns trademark registrations for the word TATA in over 50 countries besides India.
  9. It is stated that the plaintiff, in the month of July-August 2011 received information that defendants are engaged in the business of providing transport; packaging and storage of goods; travel arrangement, packaging / moving services under the name and style TATA SAFE PACKERS AND MOVERS.
  10. Further, it was learnt that the defendants also operate via their website www.tatasafe.com. This led the plaintiff to appoint an independent investigator to ascertain whether the defendants are engaged in providing services/goods bearing the plaintiff’s trademark TATA. The report of the investigator inter alia revealed that the defendants are using the domain name www.tatasafe.com to provide all kinds of packing and moving and related services (national and international) with their branch offices situated in various cities in India.
  11. Further, investigation revealed that the entity by the name M/s Tata Safe Packers and Movers was started by defendant no. 1 sometime during the year 2010.
  12. Plaintiff has duly proved that plaintiff is the registered proprietor of the mark „TATA‟ in various classes by producing the legal proceedings and Certificates of Registered Marks as Exhibit P-1 & Exhibit P-2 in Class-39. Plaintiff has also duly proved that the plaintiff is the registered proprietor of the mark „TATA‟ in Class 39 (Transport; Packaging and storage of goods; travel arrangement).
  13. It is proved that the mark TATA‟ has been used by the plaintiff for a long period of time and enjoys reputation and goodwill and has acquired the status of a “well-known” mark.
  14. Perusing the report of the independent investigator (Ex- PW1/15), it is clear that defendants are engaged in the business of transport, packaging and storage of goods, travel arrangements, etc and are using the name/trading style TATA SAFE PACKERS AND MOVERS, besides using the domain name www.tatasafe.com. It is evident that defendants have adopted the trade name TATA SAFE PACKERS AND MOVERS and the website www.tatasafe.com only to associate themselves with the well known mark of the plaintiff.
  15. In view of the above, it is apparent that plaintiff is the registered proprietor of the mark TATA. Plaintiff is also the registered owner of  the mark TATA under Class 39. It is also apparent that defendants are also carrying on their business in the same field as that of the plaintiff and are infringing the registered mark of the plaintiff, TATA by adopting a deceptively similar trade name TATA SAFE PACKERS AND MOVERS and website www.tatasafe.com.
  16. The plaintiff has submitted a bill of costs for a sum of Rs.2,17,941 /- which includes legal fees and miscellaneous expenses. The same is reasonable. The Bill of costs is taken on record.
  17. In view of the above, the suit is decreed in terms of prayer (i) and (ii). Accordingly a decree of permanent injunction is issued thereby restraining the Defendants, their partners or proprietors, as the case may be, their officers, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in the business of providing transport; packaging and storage of goods; travel arrangement, packaging / moving services under the domain name www.tatasafe.com and/or the mark TATA SAFE PACKERS AND MOVERS and/or using any trade mark/description/name/device a mark bearing the trademark TATA and/or any mark/s confusingly or deceptively similar to the Plaintiff’s trademark TATA amounting to infringement of the registered trademark numbers 1247049, 1236894 as well as the other trade mark registrations mentioned in ANNEXURE A to the plaint owned by the Plaintiff Company and its sister concerns.
  18. A Further decree of permanent injunction is issued thereby restraining the Defendants, their partners or proprietors, as the case may be, their officers, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in the business of providing transport; packaging and storage of goods; travel arrangement, packaging / moving services under the domain name www.tatasafe.com and/or the mark TATA SAFE PACKERS AND MOVERS and/or using any trade mark/description/name/device bearing the trademark TATA and/or any mark/s confusingly or deceptively similar to the Plaintiff’s trademark TATA amounting to passing off of the Defendants’ services / goods as that of the Plaintiff‟s.
  19. Further, the defendants are directed to transfer the domain name www.tatasafe.com in favour of the plaintiff.
  20. The Suit is decreed with costs. In addition, the plaintiff is also entitled to legal fees and expenses quantified at Rs.2,17,941/-.
  21. Decree sheet be drawn accordingly.