[Case Brief] Tata Sons Ltd. and Another v/s Arno Palmen and Another, 2013

Case Name
Tata Sons Ltd and Another v/s Arno Palmen and Another
Case NumberCS (OS) No. 563/2005
CourtDelhi High Court
BenchJustice ML Mehta
Decided OnMarch 22, 2013
Relevant Act/SectionsTrademark Rules, 2002- Fourth Schedule
Author of the briefAditya Gor

Brief Facts and Procedural history-

The present suit is instituted by Tata Sons Ltd. (Plaintiffs No 1) and Tata Info-tech Ltd.  (Plaintiff No. 2) in order to seek permanent injunction against the defendants from using the trademark/domain name www.tatainfotech.in or any other mark/domain name which is identical with or deceptively similar to the plaintiffs trademark TATA/TATA INFOTECH.  It is also prayed that an order should be passed for transfer of the domain name www.tatainfotech.in to the plaintiffs from the register of the Registrar, Key-Systems GmBH, and for delivery-up of all infringing materials along with the rendition of accounts of profit illegally earned as well as damages.

The subsidiary Tata Info-tech is the principal investment holding company of the Tata Group. The name TATA is submitted to be has been derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. The name TATA has been used by the plaintiffs since its inception and on account of the descriptive nature and the pioneering activities of the Founder, the name TATA has consistently been associated with an exclusively 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 trademark/domain TATA.

The House of TATA’s comprises of over 50 companies which use TATA as a key and essential part of their corporate name. Plaintiff No. 1 is the registered proprietor of the trademarks pertaining to and/or comprising the word TATA in relation to various goods falling across various classes of the Fourth Schedule of the Trade Mark Rules, 2002. Thus Plaintiff No. 1 has the exclusive right in the said trademark and is thus entitled to the exclusive use thereof.

Plaintiff No. 2 is a pioneer in the field of information technology and has been using the trade name and service mark TATA INFOTECH since the year 1997. And that due to its credibility built over the years, its customer-centric approach and its fast and high quality services and solutions being provided under the service mark TATA INFOTECH, the plaintiff No. 2 has been conferred with various recognition and awards, which reflect its immense goodwill and reputation that it enjoys in its field in India and abroad. The plaintiffs also have an enormous presence on the internet and own various domain names, inter alia tata.com, tatainfotech.com, etc. And that the plaintiff No. 2 with a view to advance its business activities registered the domain name www.tatainfotech.com as far back as January 1998. These websites also facilitate certain facilities such as online business queries and are, therefore, in a sense, e-commerce websites.

On February 21, 2005, the defendant sent an email to the plaintiff No 2 informing them that he had registered the impugned domain name. The defendant in the said email had claimed that he supposedly received an offer of purchase of this domain name for a “large sum of money” and that he wanted to inform the plaintiff about this. According to the plaintiff, this clearly showed that the defendant had registered the domain name only with a view to making illegal gains out of selling this domain name either to the plaintiffs or to any third party who wished to acquire it to use it in an illegitimate and mala fide manner. The plaintiff also claimed that this showed that the defendant was very well aware of the plaintiff’s right to the trade name and service mark TATA INFOTECH.

The Supreme Court vide order dated 29.04.2005, granted an ex-parte interim injunction restraining the defendant No. 2 from using or transferring the impugned domain name. The defendant was directed to freeze the domain name.  This matter was decreed before the Supreme Court by an ex-parte order.

The ratio of the Court-

According to the evidence placed on record, the WHOIS search conducted on the registry website for the domain name www.tatainfotech.com clearly states that the record of the said domain name was created on January 30, 1998. The plaintiffs have also stated that they have been the prior user with respect to the said domain name ever since the year 1998.

Further, the email correspondence also conclusively demonstrates that the defendant No. 1 not only had the knowledge that plaintiff No. 2 was the legitimate owner and user of the trademark TATA INFOTECH, but also got the impugned domain name registered deliberately in bad faith, in the hope of being able to sell the domain name to the plaintiffs, or take unfair advantage of the distinctive character and repute of the plaintiffs’ trademark.

Decision Held-

The defendant No. 1, its servants, agents and assigns and all others acting on behalf of the defendant are restrained from conducting any business or dealing in any manner including using domain name www.tatainfotech.in or the word TATA or any name comprising of the same or deceptively/confusingly similar to it regarding any goods, services or domain. The defendant is directed to cancel the registration of the impugned domain name.  Thus the suit was accordingly decreed.

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