Overview: –
The plaintiff, Tata Sons Private Limited, is a promoter and principal investment holding company of various TATA Companies. They are the owner and registered proprietor of the well-known trademark and copyright ‘TATA’ and device marks and .
Defendant 1 is the proprietor of M/s Jay Maa Shakti Enterprises who is selling manual and battery-operated sprayer pumps and knapsack sprayers bearing the brand TATA’S STAR SJAKTI (hereinafter, ‘impugned products’). Defendant 2 is an online portal www.mazing.store.
Facts: –
The present suit was filed by the plaintiff against Defendant 1 and Defendant 2 seeing the permanent injunction restraining infringement of registered trademarks, passing off, dilution, and tarnishment of trademarks.
On 15th November 2021, an ex parte ad-interim injunction has been granted in favour of the plaintiff by restraining the defendants from manufacturing, selling, offering for sale, supplying, advertising, directly or indirectly dealing in any business unauthorizedly using the plaintiffs trademark and permutations/combinations thereof, in relation to any goods or services in printed and/or in any other media, electronic online version or in any other form resulting in infringement passing off, unfair competition and dilution of plaintiffs rights.
On 27th July 2022, the court directed Defendant 1 to file an affidavit containing a complete statement of accounts of M/s Jay Maa Sakti Enterprises and the quantum of sale of impugned products. She stated that she had discontinued the usage of impugned marks after receiving a restraining order and she does not have any intention to use the said mark in the future.
The parties have resolved the dispute amicably after filing of Defendant 1’s affidavit. The defendants stated that they have no objection if the suit decreed in the terms of the prayers present in paragraph 53 (i) to (iv) as follows:
- An order of permanent injunction restraining the defendants from manufacturing, selling, offering for sale, supplying, advertising, directly or indirectly dealing in any business unauthorizedly using the plaintiff’s well-known trademarks TATA and permutations/combinations thereof, amounting to infringement of the plaintiff’s registered trademarks.
- An order of permanent injunction restraining the Defendants from manufacturing, selling, offering for sale, supplying advertising, directly or indirectly dealing in any business unauthorizedly using the plaintiff’s well-known trademarks TATA and the device marks or any marks confusingly or deceptively similar to the said marks amounting to passing off the defendant’s goods/services as that of the plaintiffs.
- An order of permanent injunction restraining the Defendants from engaging in any act whatsoever that will result in the dilution and tarnishment of the plaintiff’s well-known trademark TATA.
- An order of permanent injunction directing defendant 2 to take down all references to the infringing products bearing the Plaintiff’s well-known trademark TATA from its website.
Held: –
The suit was decreed in terms of the prayer accordingly:
- Defendant 1 has agreed to remove all references to the mark TATA qua its products on online platforms.
- Defendant 1 shall pay the total costs of Rs. 25, 000 /- to the plaintiff. However, if Defendant 1 indulges in the use of the mark ‘TATA’ or any other similar marks again, the plaintiff is free to avail of its remedies in accordance with law including seeking simple and punitive damages against Defendant 1 in the future.
- ‘TATA’ label shall be removed from all these products before they are sold. The packaging and label of the impugned products shall also be destroyed in front of Plaintiff’s representative.
- Since Defendant 2 is only an online platform selling the impugned products of defendant 1, the present order shall be applicable to Defendant 2 as well.