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TMI Blog2011 (3) TMI 1752X X X X Extracts X X X X X X X X Extracts X X X X ..... ly denotes the conglomeration of companies forming the Tata Group, which is known for high quality of products manufactured and/or services rendered by it under the trade mark/name TATA. The House of Tatas comprises of over 100 companies of which over 50 companies use TATA as a key and essential part of their corporate name. It is claimed that being proprietor of the trade mark TATA, the Plaintiff company enjoys exclusive rights in the aforesaid mark. The Plaintiff company claims to be owner of various trademarks which contain the name TATA as a part of the registered trademark. It is alleged that on account of continuance and extensive use of the Plaintiff's trade mark TATA over a long period of time spanning a wide geographical area, coupled with vast promotion and publicity, the said trademark enjoys an unparalleled reputation and goodwill and has acquired the status of a well known trademark. 2. The Defendants in Suit No. 264/2008 Mr. Manoj Dodia and Mr. Manish Dodia are stated to be co-owners of M/s. Durga Scale Co., which is engaged in the business of manufacturing and selling weighting scales and spring balances under the trade mark A-One TATA. It is claimed that us ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the Plaintiff has filed the affidavit of Mr. V. Gurumoorthi, Constituted Attorney of Plaintiff No. 1, by way of evidence. In his affidavit Mr. Gurumoorthi has stated that Plaintiff Tata group had a turnover of ₹ 2,51,543/- Crores for the year 2007-08 and is one of the most trusted business houses in the Country. He has claimed that the name/trademark TATA is a household name, synonymous with excellence in almost every field of business activity and the enterprises promoted by Tata operate in various core sectors, including iron and steel, textile power, chemicals, hotel, automobile, computer, telecommunications, financial services and mutual funds, etc. and the use of trademark and the name TATA by predecessors of the Plaintiff dates back to 1868. According to him, house of Tatas consists of over 100 companies of which more than 50 companies use TATA as a key and essential part of their corporate names. He claims that the Plaintiffs are proprietors of the trademark TATA on account of priority in adoption, long, continuous and extensive use and advertising and the reputation accruing thereto in the course of trade. He has stated that the Plaintiffs and its group companies use ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e consumers. When a person uses another person's well known trademark, he tries to take advantage of the goodwill that well known trademark enjoys and such an act constitutes an unfair competition. 8. The concept of confusion in the mind of consumer is critical in actions for trademark infringement and passing off, as well as in determining the registrability of the trademark but, not all use of identical/similar mark result in consumer confusion and, therefore, the traditionally principles of likelihood of confusion has been found to be inadequate to protect famous and well known marks. The world is steadily moving towards stronger recognition and protection of well known marks. By doing away with the requirement of showing likelihood of confusion to the consumer, by implementing anti-dilution laws and recognizing trans-border or spill over reputation wherever the use of a mark likely to be detrimental to the distinctive character or reputation of an earlier well known mark. Dilution of a well known trademark occurs when a well known trademark loses its ability to be uniquely and distinctively identify and distinguish as one source and consequent change in perception which ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ant sectors of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark. Thus, the TRIPS Agreement, 1994 brought about a material change by prohibiting use which constitutes a representation or imitation and is likely to create confusion even if such use is in relation to altogether different goods or services, so long as the mark alleged to have been infringed by such use is a well known mark. This Article, thus, grants protection against dilution of a trademark, which may be detrimental to the reputation that the business carried under a well known trademark enjoys. 10. Well known marks and trans-border reputation of brands was recognized by Courts in India, even before Trade Marks Act, 1999 came into force. In , the manufacturers of Mercedes Benz sought an injunction against the Defendants who were using the famous three pointed star in the circle and the word Benz . The Court granted injunction against the Defendants who were using these marks for selling apparel. Similarly, in Whirlpool Co. and Anr. v. N.R. Dongre (1996) PTC 415 (Del.) the Plaintiff Whirlpool had not subsequently registered their tradem ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e duration, extent and geographical area of any use of that trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; (iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. Sub-section (7) of Section 11 of the Trademarks Act, 1999 specifies the factors which the Registrar has to take into account while determining whether a trademark is known to the relevant section of the public or not and reads as under: (7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of Sub-section (6), take into account- (i) The number ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction. 14. It is difficult to dispute that as far as India is concerned, TATA is almost a household name. The house of TAT A ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... fotech Limited. 16. In CS(OS) No. 1922/2003 decided on 14th September, 2004, this Court observed that the trademark TATA has become a household name not only in India but throughout the world and, therefore, is well known as contemplated in Section 11(6) of Trademarks Act, 1999. Interim orders have been passed by this Court in a number of cases upholding the trademark TATA of the Plaintiff company. In Tatara Tea Company. Peshawar v. TATA Sons Ltd. Registrar of Trade Marks, Karachi, IPLR 2005 October 221, the High Court of Sindh upheld the order of Registrar of Trademarks, Karachi dismissing the application for registration of the Appellant's trademark TATARA tea on label, when the proposed registration was opposed by Tata Sons Limited. The Respondent before the High Court had contended that due to wide and extensive use of its registered trademark for many years and wide publicity given in many countries, it had acquired immense popularity and valuable goodwill all over the world and its goods were known by the famous trademark TATA. The documents filed by the Plaintiff company show that TATA has been included amongst topmost valuable global brands and is the only India ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oprietor of the trademark nor has his permission to use the mark but still decides to use that mark or a mark which is identical or deceptively similar to the registered trademark in relation to goods or services in respect of which the trademark is registered and such use of the mark likely to be taken as use as a trademark. Sub-Section 2 of Section 29, to the extent it is relevant, provides that if a registered trademark is used by a person, who is neither its proprietor nor has permission from the registered proprietor for its use, uses that mark in the course of a trade which because of its identity with the registered trademark and similarity of the goods or services covered by such registered trademark or its similarity to the registered trademark and the similarity of or identity of the goods or services covered by such registered trademark or its identity with the registered trademark and the identity of the goods or services covered by such registered trademark is likely to cause confusion on the part of the public or have an association with the registered trademark, he infringes the registered trademark. 19. In CS(OS) No. 264/2008, a Local Commissioner was appointed b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... use of the mark TATA on the product and on account of connection of the trademark TATA with the house of Tatas, he may believe that the product was likely to be of superior quality and high standard which he expects in respect of products being sold by Tata group of companies. If it is later found that the quality of goods purchased by him is not as good as the quality of the goods being sold by house of Tatas, this may immensely damage the goodwill and brand equity which Tata group of companies enjoys in the market, besides adversely affecting the interest of the citizens who may pay for a product of high quality but may end up with getting a product of inferior quality. Thus, not only infringement, but also a case of passing off is clearly made out against the Defendant, despite the fact that company of Tata Group is manufacturing and/or selling this product. 20. Since the trademark TATA is a well known trademark, use of the aforesaid mark by the Defendant on the products being sold by him also constitutes infringement within the meaning of Section 29(4) of the Trademarks Act, 1999 since by using the trademark TATA, he obviously has tried to take an unfair advantage by encashi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... relation to goods shall be construed as a reference to the use of the mark upon or in any physical or in any other relation whatsoever to such goods. When a trade mark is used on an invoice issued for selling the goods, it does indicate connection between the goods being sold under the invoice and the trade mark which the invoice bears, and therefore, amounts to use of the mark in relation to the goods, which are sold under that invoice. In Natural Chemicals Ld. v. Amblins (Chemists) Ld. (1940) 57 RPC 323, the trademark Phyllosan was found displayed on a few invoices of the Defendant. Section 3 of Trademarks Acts (1905 to 1919) which governed the case before the Court, defined the trademark to mean as a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trademark by virtue of manufacture, selection, certification, dealing with or offering for sale. It was held that though use of the word Phyllosan on the invoices was not a use of the trademark upon the goods in respect of which it was registered, it was clearly or reasonably clearly a use in connection with the goods because the Def ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ation in respect of parts of vehicle. Therefore, this registered trade mark of the Plaintiff covers auto parts as well. Since the Defendant is dealing in auto parts and the registered trade mark of the Plaintiff has been printed on his invoice, his act amounts to infringement within the meaning of Sub-Section 1 of Section 29 of Trade Marks Act. Since use of the aforesaid registered trade mark of the Plaintiff on the invoices of the Defendant is likely to cause confusion to the customers by making them believe that the Defendant was commercially connected with TATA company being its distributors/agent/licensee, it also amounts to infringement within the meaning of Sub-Section 2 of Section 29 of Trade Mark Act. In any case, the TATA being a well known mark, use of the aforesaid mark on the invoices of the Defendant whether in relation to auto parts or in relation to some other goods would constitute infringement within the meaning of Sub-Section 4 of Section 29 of Trade Mark Act. 24. For the reasons given in the preceding paragraphs, Mr. Jawed Ahmed Defendant in Suit No. 232/2009 is restrained from using the mark stylized T in a circle (device) or any other registered trade mark o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ancial terms, on account of diminution in the value of the brand as well as sale of their products/services, if the brands are not given adequate protection by the Courts, by awarding punitive damages against the infringers. Also, a soft or benevolent approach while dealing with such persons, is also likely to prejudicially affect the interests of the consumer, who may pay the price which a premium product commands in the market, but may get an inferior product on account of such unscrupulous persons using trademarks of others for their own commercial benefit, at the cost not only of the trade mark owner, but also the consumer who purchases their product. Another purpose behind awarding punitive damages is to deter those who may be waiting in the wings and may be tempted to imitate the trade mark of others, in case those who are sued before the Courts are not made to pay such damages as would really pinch them. Awarding token damages may, therefore, not serve the desired purpose. 28. Our country is now almost in the league of advanced countries. More and more foreign companies are entering our markets, with latest products. They would be discouraged to enter our country to in ..... X X X X Extracts X X X X X X X X Extracts X X X X
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