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TMI Blog2012 (7) TMI 1055X X X X Extracts X X X X X X X X Extracts X X X X ..... ir services of business as and for the services or business of the plaintiff. The fact of the matter is that the plaintiff company is into open source services which is primarily divided into three main heads, namely:- a. Red Hat Consulting - mainly dealing with technology assessment, implementations, quick starts, health checks, knowledge transfer workshops etc. b. Red Hat Training - dealing with Linux system administration, enterprise application development, LAMP development etc. c. Global Support Services (GSS) - dealing with software support, Technical Account Managers (TAMs) and Developer Support packages etc. 2. The plaintiff formed a Joint Venture in India with Clover Technologies. Plaintiff states that it has played key roles in developing E-Court project, HDFC Bank had used plaintiff's product, JBoss Enterprise Application Platform for implementing web based solution for improved productivity, efficiency. New India Assurance also had used plaintiff's products to build cost effective, scalable and secure infrastructure. Besides this plaintiff had executed MOUs with the various State Governments liked Tamil Nadu, Kerala for supporting the state's dev ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... variety of services provided by them and the same is renewed from time to time. The plaintiff has registered trade mark in various countries including India. The plaintiff states that the goods and services are exclusively advertised and promoted on its exclusive website www.redhat.com. 7. That after it came to the knowledge of the plaintiff that defendant No. 1 is having the domain name as www.redhatinfotech.com and the same was registered under defendant No. 1. The plaintiff issued a notice via email dated 18th July, 2008 stating the plaintiff was interested in an amicable settlement. Another email dated 31st July, 2008 stating that the active content was removed from the website and the matter was accordingly seemed resolved. 8. The plaintiff further states that they found defendants had expanded their arena of the Offending Marks to another website under domain name www.bulk.smshesms.com. The plaintiff further states that defendant No. 4 had a trade mark application bearing No. 1859208 in class 37 and defendants No. 4 claimed to be using the same since 28th January, 2008. Upon further search, it was revealed that defendant No. 1 had applied for registration of RED HAT INF ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... way which is not similar to the plaintiff's logo. The device of the cap is different. It is an honest user. Therefore, the defendants are entitled to use the same. As far as the name of the company is concerned, the Registrar of Companies has registered the said name in Corporation Certificate which clearly provides that a certificate of incorporation given by the Registrar in respect of any association shall be conclusive evidence that all the requirement of this Act, have been complied with in respect of registration and matter precedent and incidental thereto, and that the association is a company authorized to be registered and duly registered under this Act. 13. The other argument of the learned counsel for the defendants is that the nature of the business of the defendants is different as that of the plaintiff. Therefore, the question of confusion and deception does not arise. Lastly, the plea of delay was also raised by the counsel for the defendants by alleging that there has been a considerable delay in bringing the action before Court, thus, the plaintiff is entitled for injunction. Apart of delay, the suit is also barred under the Limitation Act. 14. In reply ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n in India, admittedly M/s Red Hat India (Pvt.) Ltd. formed as a joint venture between the plaintiff and Clover Technologies, India which was incorporated on 5th July, 2008 and now is a wholly owned subsidiary of Red Hat, Inc. The plaintiff opened its first office in the city of Pune in the year 2000. The plaintiff has a distribution network of over 50 channel partners spanning 20 cities across India. The key distributors of the plaintiff's software include GT Enterprises, Ingram Micro India and Integra Microsystems. The plaintiff's Red Hat Learning Services are also available with over 110 training partners at over 500 locations across India. 17. The scanned copy of the comparative representation of the plaintiff and the defendants' logo are reproduced here as below: 18. The main contention of the learned counsel for the plaintiff is that the defendants' adoption and use of the offending marks constitutes trade mark infringement and passing off which are virtually identical to the plaintiff's well-known registered trade mark. The defendants' activities are in relation to the same services and their sole intention is to represent the plaintif ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... th the parties, the learned counsel for the plaintiff has argued that those are almost the same. He has denied the contention of the defendants that the business activities of the defendants are different than the plaintiff. He argued that even otherwise, the trademark of the plaintiff is protected with regard to dissimilar goods of business under Section 29(4) of the Act in view of the reputed mark RED HAT of the plaintiff. 22. Mr. Lall has also argued that the overseas user of the plaintiff has also to be taken into consideration in this country in view of the settled law. He referred the decision of the case of N.R. Dongre and others vs. Whirlpool Corporation and others, reported in AIR 1995 Del 300 whereby the findings of the Division Bench were confirmed by the Apex Court. Thus, he submits that the defendants have miserably failed to assign any reason for using the trademark/trade name RED HAT along with the cap device which is similar to the device of SHADOWMAN of the plaintiff. 23. After having considered the submissions of the learned counsels for both the parties, I am of the view that the following points are to be considered while deciding the pending application o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.... 28. Rights conferred by registration - (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.... 31. Registration to be prima facie evidence of validity - (1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. (2) In all legal proceedings as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o those goods if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial ii. In the case of American Home Products vs. Mac Laboratories, reported in AIR 1986 SC 137 in Para 36 it was held as under: When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction.... iii. In the case of National Bell Co. vs. Metal Goods Mfg. Co., reported in AIR 1971 SC 898 at page 903 it was held as under: On registration of a trade mark the registered proprieto ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. 28. Since the plaintiff is holding registration of the trade mark RED HAT as well as SHADOWMAN device under various classes, i.e. classes - 9, 41 42 and the use of the trade mark RED HAT by the defendants as well as part of their corporate name, it is clear that prima-facie, the plaintiff has been able to make out a strong case for infringement of the trade mark, as the plaintiff has been able to satisfy the Court on producing of documents that the trade mark RED HAT is a well-known trademark and has acquired goodwill and reputation not only in India but also other parts of the world. Thus, it is also protected under Section 29(4) of the Act. As the defendants are using the trade mark RED HAT as part of their corporate name, they are also guilty of infringement under Section 29(5) of the Act. 29. The defendants' contention has no force that since the name was registered under the Companies Act and under various provisions the defendants are entitled to use the name of the company, therefore, this Court should not pass the injunction order in view of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in India would be irrelevant if they were first in the world market. (b) In the case of Allergan Inc. vs. Sun Pharmaceutical Industries, reported in (2006) 2 Cal. 272, the Calcutta High Court restrained the defendant permanently despite the fact that the plaintiff was not in Indian market. The injunction was granted on the ground that the plaintiff was the prior adopter of the trade mark OCUFLOX worldwide. (c) N.R. Dongre and others vs. Whirlpool Corporation and others, reported in AIR 1995 Del 300, the relevant paras thereof read as under:- 16. Similarly the High Court of Australia in the Seven Up Company vs. O.T. Limited, (1947) 75 CLR 203 held as follows: ...In my opinion the effect of these cases is that in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... New Zealand, which reversed the decision of the Assistant Commissioner. Against the decision of the Supreme Court, the Australian company appealed to the High Court of New Zealand. The High Court while upholding the decision of the Supreme Court laid down the test to be applied while deciding whether use in New Zealand of the appellant's trade mark was likely to deceive or cause confusion when the use of the American trade mark in New Zealand was not established, but only the awareness through advertisement thereof in the concerned New Zealand market of that mark was proved. In this connection it was held as follows:- ...It is the awareness or cognizance of those who are potential buyers in, or otherwise associated with the relevant New Zealand market that is material. If there is a likelihood that they will be deceived or confused as to the origin of goods covered by the applicant's mark, it matters not how they gained the knowledge that gives rise to that deception or confusion. ...But in my view it is-a fair inference from the evidence that many New Zealand poultry men with an interest in improving breeding stocks in New Zealand read overseas magazines to expand t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rded, by a substantial number of members of the public or in the trade, as coming from a particular source, known or unknown; it is not necessary that the name of the plaintiff's firm should be known.....The plaintiff must further prove that the defendant's use of name or mark was likely or calculated to deceive, and thus cause confusion and injury, actual or probable, to the goodwill and the plaintiff's business, as for example, by depriving him of the profit that he might have had by selling the goods which ex hypothesi, the purchaser intended to buy. Thus, the cause of action involves a combination of distinctiveness of the plaintiff's name or mark and an injurious use by the defendant of the name or mark or a similar name or mark, sign, picture or get-up does or does not amount to passing off is in substance a question of evidence; the question whether the matter complained of is likely to deceive is a question for the Court. 33. The judgment passed in the case of Laxmikant Patel vs. Chetanbhai Shah, reported in (2002) 3 SCC 65, the relevant para-10 of which reads as under:- The law does not permit any one to carry on his business in such a way as would p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... me BATA was associated with the name of Mr. Thomas Bata, a native of Czechoslovakia who started his business in India making shoes and rubber products. The Court enjoined the use of the word BATAFOAM on foam products and held: ..I am of the opinion that the user of name Bata to any product may give rise in the minds of unwary purchaser of average intelligence and imperfect recollection that it is a product of the plaintiff. It is this impression which may ultimately cause damage to the reputation of the plaintiff. It amounts to an invasion of his right vis- -vis the name Bata . (Emphasis supplied) 38. Thus, prima-facie, the plaintiff has been able to establish its case of passing off. Delay 39. Lastly, the learned counsel for the defendants has argued that there is a delay on the part of the plaintiff in bringing the action before this court. Let me mention here that no clear and cogent evidence, i.e. by way of advertisement in the newspaper has been produced by the defendants regarding user claimed which may indicate that the plaintiff was aware about user of the defendants as claimed. No separate sale and advertisement figures have been filed bearing the mark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history. d) In the case of M/s. Bengal Waterproof Limited Vs. M/s. Bombay Waterproof Manufacturing Company and another, reported in AIR 1997 SC 1398, it was held as under: 20.... It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper relief, for all times to come in future defendant of such a suit should be armed w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ice to the defendants by the plaintiff as thereafter the defendants were using the trade mark at their own cost and risk if it establishes that they were infringing the rights of the plaintiff. 43. The other aspect of the matter is that despite of interim order passed in the matter restraining thereby the defendants from using the trade mark RED HAT with a device which is similar to the plaintiff's SHADOWMAN device, there is a material on record to show, though the plaintiff's two applications under Order XXXIX, Rule 2A CPC is pending. This Court is, therefore, not expressing any opinion in this regard at this stage as the said applications have to be decided as per their own merit. 44. In view of the over-all facts and circumstances of the case as well as the conduct of the defendants, it appears that the plaintiff has been able to make out a strong prima-facie case for the grant of an interim injunction. The plaintiff's application is, therefore, allowed with costs. Accordingly, till the final disposal of the suit, the defendants, their agents, employees, franchisees, representatives and all other persons acting on their behalf are restrained from using the trad ..... 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