2013 (5) TMI 188 - HC - Companies Law

Infringement of trademarks - Plaintiffs seeking permanent injunction and also praying for an order of delivery-up of all infringing materials along with the rendition of accounts of profit illegally earned as well as damages Held that - In the instant case, after perusal of the report of Local Commissioner along with the list of inventory prepared by him of the impugned goods and also after perusal of the other documents placed on record. I am of the opinion that the plaintiff has established a case of passing off with respect to the defendant s products carrying the plaintiff s trade mark TATA. The impugned goods are also clearly infringing the well-known trade mark of the plaintiff. The suit of the plaintiff is accordingly decreed and an order of permanent injunction restraining the defendants from manufacturing, selling, advertising pressure cookers or goods of any description bearing a trade mark that is identical or similar to the plaintiff s trade mark TATA. The defendants are also directed to destroy the goods and packaging material or any other printed material bearing the trade mark TATA within a period of four weeks from today. With regards the relief of damages prayed the evidence of the plaintiff has gone unrebutted, which includes loss of business, reputation and goodwill in the market. Since the amount of damages claimed is based on assessment of the plaintiff which is unassailed a sum of Rs. 5,05,000/- can be reasonably awarded to the plaintiff as compensatory for the loss of business and damage to the goodwill.

Summary

Issues:
Infringement of trademarks TATA, Permanent injunction, Delivery-up of infringing materials, Rendition of accounts of profit, Damages.

Analysis:
The plaintiff, Tata Sons Ltd., filed a suit against the defendants alleging infringement of trademarks TATA and sought permanent injunction, delivery-up of infringing materials, rendition of accounts of profit, and damages. Tata Sons Ltd. claimed to be the principal investment holding company of the Tata Group, using the name TATA since its inception in 1917. The plaintiff argued that the name TATA is highly descriptive and associated exclusively with the conglomerate known for high-quality products and services. The House of TATA comprises over 50 companies using TATA in their corporate names, with the plaintiff being the registered proprietor of trademarks related to TATA under various classes. The plaintiff contended that the defendants' use of the mark TATA on pressure cookers under the name TATA GOLD amounted to infringement and passing off under the Trade Marks Act, 1999.

The plaintiff asserted that the defendants' actions were motivated by malafides, intending to misappropriate the goodwill of the plaintiff's trademark. The plaintiff claimed that the defendants' use of TATA GOLD was an attempt to create confusion in the market and derive unfair advantage by associating their products with the plaintiff. The cause of action arose in 2004 when the plaintiff discovered the infringing goods, and the plaintiff argued that the Court had territorial jurisdiction over the matter due to the defendants' location and business operations within its jurisdiction. The plaintiff cited previous court decisions recognizing the well-known status of the TATA mark and presented evidence of misuse of its trademark in various cases and domain names.

The Court referred to Section 29(4) of the Trade Marks Act, 1999, which provides statutory protection to well-known marks and prohibits the unauthorized use of marks that are identical or similar to registered trademarks. Citing previous judgments, the Court affirmed the well-known status of the TATA mark and the principles of passing off under the doctrine of dilution and unfair competition. After reviewing the evidence, including reports and documents, the Court found in favor of the plaintiff, decreeing a permanent injunction against the defendants from manufacturing, selling, or advertising goods bearing a mark identical or similar to TATA. The defendants were also directed to destroy infringing goods and packaging materials. Additionally, the Court awarded damages of Rs. 5,05,000 to the plaintiff for loss of profits and damage to goodwill, considering the defendants' ex parte status and unrebutted evidence presented by the plaintiff.