Full Text
Order delivered on : 15th September, 2014 CS(OS) No. 2123/2011
BRAHMOS AEROSPACE PVT LTD ..... Plaintiff
Through Mr. Prateek Kr. Srivastava and Mr. Surjeet Singh Malhotra, Advs.
Through None
JUDGMENT
1. The plaintiff has filed the suit for permanent injunction restraining infringement of the trademark, rendition of accounts/damages and delivery up etc. against the defendant.
2. Brief facts of the case as stated in the plaint are that the plaintiff, an Indian Russian joint-venture company, was incorporated on 5th December, 1995 as BrahMos Private Limited and thereafter, its name was changed to BrahMos Aerospace Private Limited in 2003. This Joint Venture was formed through an inter-governmental agreement for design, development, manufacture and sale of supersonic missile systems to Indian Armed Force.
3. It has been averred that BrahMos is a unique name formed with the conjugation of parts of names of two great rivers of India and Russia, i.e. “Brahmputra” and “Moskva”. BrahMos is a distinctive 2014:DHC:4677 trademark of the plaintiff which also forms an important constituent of the trading name of the plaintiff.
4. Plaintiff is an old, well known, reputed and established company that has been continuously using the trade name and trademark BrahMos from the date of its incorporation since 1995.
5. The trademark BrahMos has been registered in favour of the plaintiff in India under various classes and a list of registrations in respect of BrahMos in favour of the plaintiff is given in Para 9 of the plaint. Though primarily the plaintiff’s activities relate to the supersonic missile system, however, for the purpose of the present case, it has been stated that the plaintiff also has registration bearing No. 1865115 in the trademark BrahMos in class 25 in respect of clothing, footwear and headgear, and also has registration bearing No. 1865114 in the trademark BrahMos in class 24 in respect of textiles and textile goods, not included in other classes, bed and table cover.
6. The sales of goods bearing the trademark BrahMos of the plaintiff for years 2008, 2009 and 2010 are given in Para 12 of the plaint of which the sales for the year 2010 is stated to be Rs.5,793,087,887/-. The cost of advertisements done by the plaintiff in India for the years 2008, 2009 and 2010 are given in Para 13 of the plaint of which the sales for the year 2010 is stated to be Rs.7,143,827/-.
7. It is averred that by virtue of the excellent quality of the products of the plaintiff, the trademark BrahMos has acquired valuable reputation in all the markets in India and purchasers identify and associate BrahMos with the plaintiff. The said trademark BrahMos is also represented in a distinctive manner i.e. both the alphabets B and M are written in capital letters.
8. It is the case of the plaintiff that it came to the knowledge of the plaintiff in about December, 2010 that the defendant has adopted the trademark BrahMos in relation to its goods i.e. garments, which is identical to the trademark and trade-name BrahMos of the plaintiff. It is averred that the defendant has adopted the trademark BrahMos so as to trade upon the reputation and goodwill accruing to the plaintiff and to earn undue profits. It has been contended that since the purchasing public and trade associates the trade name and trademark BrahMos exclusively with the plaintiff, the defendant’s use of an identical trademark will invariably deceive the trade and public into a belief that the goods of the defendant are those of the plaintiff and the defendant is associated with the plaintiff in some manner.
9. Aggrieved of the infringement and passing off by the defendant of the plaintiff’s trademark BrahMos, the plaintiff filed the present suit.
10. The suit as well as the application under Order XXXIX Rules 1 and 2 CPC were listed before Court on 2nd September, 2011 when an ex-parte order was passed restraining the defendant, its servants, agents, assignees from manufacturing, selling, offering for sale, advertise directly or indirectly under the trademark BrahMos or any other trademark deceptively or confusingly similar thereto.
11. Despite service and counsel for defendant entering appearance and filing vakalatnama, no written statement was filed and even no reply to the application under Order XXXIX Rules 1 and 2 CPC was filed. In fact the counsel appearing on behalf of the defendant sought discharge from the case which was allowed vide order dated 8th January, 2013. No admission denial of the plaintiff’s documents was carried out by the defendant.
12. Plaintiff also filed an application bearing I.A. No.4503/2012 under Order VIII Rule 10 CPC during the course of proceedings. However, despite repeated opportunities, defendant did not file reply to the said application. The defendant was proceeded ex-parte vide order dated 28th October, 2013. However vide the same order it was observed that the plaintiff is required to prove its case by exhibiting documents and accordingly, this application of the plaintiff was dismissed on 28th October, 2013.
13. In the evidence, the plaintiff proved the facts stated in the plaint by evidence by way of affidavit of Mr. Vikas Goel, Company Secretary of the plaintiff, marked as Ex.PW1/A and also exhibited certain documents as Ex.PW 1/1 to Ex. PW 1/44 in support of its case. The same are given as follows:
(i) Original Board of Resolution dated 15th January, 2014, exhibited as Ex. PW 1/1.
(ii) Original Power of Attorney dated 10th march, 2014, exhibited as Ex. PW 1/2.
(iii) Original Constituted Power of Attorney dated 12th August in favour of Laxmi Bisht, exhibited as Ex. PW 1/3.
(iv) Original registration certifications in favour of the plaintiff issued in respect of trademark BrahMos, exhibited as Ex. PW 1/4 to Ex PW 1/39.
(v) Annual Report of plaintiff’s company for the years 2007-2008
(vi) Advertisement material of trademark BrahMos in newspapers alongwith bill, exhibited as Ex. PW 1/42 and Ex PW 1/43 (collectively).
(vii) Original Magazine Force displaying the trademark BrahMos of the plaintiff, again exhibited as Ex. PW 1/43.
(viii) Printout of the website of defendant, exhibited as Ex. PW
1/44.
(ix) True copy of Cease and Desist Notice dated 29th December,
14. The evidence of the plaintiff was closed vide order dated 21st May, 2014. The evidence filed by the plaintiff has gone unrebutted as no cross-examination of the plaintiffs witness was carried out, therefore, the statements made by the plaintiff are accepted as correct deposition.
15. It is also the case of the plaintiff that BrahMos is a well-known mark within the meaning of Section 2(1) (zg) of the Trade Marks Act, 1999 (hereinafter referred to as the “Act”) which has never been used by any other person in India rather it has been protected by the Courts from time to time in favour of the plaintiff. Section 2(1)(zg) of the Act reads as under:- “Well-known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”
16. This Court in the following cases has discussed the aspect of determination of the well-known trade mark: i) In the case of Bloomberg Finance LP vs. Prafull Saklecha & Ors. 2013 (56) PTC 243 (Del), it was observed in Para 31-44, 48-51 that:
32. Section 29 of the TM Act contemplates the owner/proprietor of the registered trade mark alleging infringement of the said mark by another person who is neither a registered proprietor in relation to the goods and services for which the mark is registered, nor has permission to use such mark in the course of his trade. Under Section 29(1) infringement results if the mark is "identical with or deceptively similar to" the registered trade mark and is in relation to the goods and services for which the trademark has been registered. The use of infringing or impugned mark must render it "likely to be taken as being used as a trade mark".
33. Under Section 29(2)(a) infringement occurs where the impugned mark is identical with the registered trademark and the goods or service for which the impugned mark is being used is similar to the goods and services covered by the registered mark. Under Section 29(2)(b) infringement occurs where the impugned mark is similar to the registered mark and the goods and the services for which is used is identical with or similar to the goods and services for which the registered mark is used. Under Section 29(2)(c) infringement occurs where the impugned trade mark is identical to the registered trade mark and the goods or services for which the impugned mark is used is also identical to the goods/services covered by the registered trade mark.
34. An additional requirement in the above three situations for infringement to result is that the use of the impugned trademark "is likely to cause confusion on the part of the public" or "is likely to have an association with the registered trade mark". Under Section 29(3) when the impugned trademark is identical to the registered trademark and the goods/services for which it is used are also identical to the goods or services for which the registration has been granted then "the Court shall presume that it is likely to cause confusion on the part of the public".
35. Therefore, under Section 29(1), (2) and (3) for infringement to result (i) the impugned mark has to be either similar to or identical with the registered mark and (ii) the goods or services for which the impugned mark is sued has to also either be identical with or similar to the goods or services for which registration has been granted. The scenario is different as regards Section 29(4) of the TM Act 1999. For infringement to result under Section 29(4), the following conditions are required to be fulfilled:
(i) the person using the impugned mark is neither a registered proprietor in relation to the goods and services for which the mark is registered nor is using it by way of permitted use
(ii) the impugned mark must be used in the course of trade
(iii) the impugned mark has to be either similar to or identical with the registered mark
(iv) the impugned mark is used for goods or services different from those for which registration has been granted;
(v) the registered trade mark has a reputation in India;
(vi) the use of the impugned mark is without due cause, and takes unfair advantage of or is detrimental to, (a) the distinctive character of the registered trade mark; or (b) the reputation of the registered trade mark.
36. The expression 'mark' has been defined in Section 2(m) of the TM Act to include "a device brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof." (emphasis supplied) Therefore, for the purpose of Section 29(4), the use of a mark as part of a corporate name would also attract infringement. In other words, if the registered mark is used by a person, who is not the registered proprietor of such mark or a permitted user, as part of the corporate name under which he trades then also infringement would also result. What is however important is that the registered trade mark must be shown to have a reputation in India and should be shown to have been used by the infringer 'without due cause". Further, it should be shown that such adoption or use has resulted in the infringer taking unfair advantage of the registered mark or is detrimental to the distinctive character or repute of the registered trade mark.
37. Section 29(4) is also distinct from Section 29(1) to (3) of the TM Act in another important aspect. The element of having to demonstrate the likelihood of confusion is absent. Perhaps to balance out this element, the legislature has mandated the necessity of showing that (a) the mark has a reputation in India (b) that the mark has a distinctive character (c) the use by the infringer is without due cause. In other words, the legislative intent is to afford a stronger protection to a mark that has a reputation without the registered proprietor of such mark having to demonstrate the likelihood of confusion arising from the use of an identical or similar mark in relation to dissimilar goods and services. The words 'detriment' in the context of the 'distinctive character' of the mark brings in the concept of 'dilution' and 'blurring'. In the context of 'repute' they are also relatable to the concept of 'tarnishment' and 'degradation'. The words "takes 'unfair advantage" refers to 'free-riding' on the goodwill attached to mark which enjoys a reputation. The disjunctive 'or' between the words 'distinctive character' and 'repute' is designedly inserted to cater to a situation where a mark may not have a distinctive character and yet may have a reputation.
38. Section 2(zg) of the TM Act defines a 'well known trade mark' in relation to any goods or services to mean 'a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or service would be course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.' Under Section 11(9)(i) and (v), for the purposes of registration of a well-known mark it is not necessary for such mark to have been used in India or be wellknown to the public at large in India. It must be well known to a substantial segment of the relevant public.
39. It may not be necessary for the proprietor of a registered mark to show that it is a 'well-known trademark' as defined in Section 2(zg) although if in fact it is, it makes it easier to satisfy the 'reputation' requirement of Section 29(4) of the TM Act. The presumption of distinctiveness attached to a registered mark is a rebuttable one. At the interim stage, either of these elements should be shown prima facie to exist. Whether in fact these elements are satisfied would depend on the evidence led by the parties at trial.
40. It may be noticed at this stage that even prior to the TM Act 1999 the Supreme Court in N.R. Dongre v. Whirlpool Corporation 1996 PTC (16) recognised the concept of cross-border reputation when it upheld the decision of the Division Bench of this Court which granted a temporary injunction in favour of a Plaintiff based abroad. The Division Bench of this Court followed the decision in Apple Computer Inc. vs. Apple Leasing & Industries 1992 (1) ALR 93, and held that it was not necessary to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of its name or mark can be restrained by the court. The main consideration was "the likelihood of confusion and consequential injury to the plaintiff and the need to protect the public from deception. Where such confusion is prima facie shown to exist, protection should be given by courts to the name or mark".
41. Turning to Section 29(5) of the TM Act 1999, it is seen that it relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction restraining order the infringer should straightway follow. This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. For the purpose of Section 29(5) of the TM Act 1999, there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.
42. However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. The question is whether in such a situation the owner or proprietor of the registered trade mark is precluded from seeking a remedy under Section 29(4) of TM Act, 1999 if the conditions attached to Section 29(4) are fulfilled.
43. In the considered view of this Court, given the object and purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) of the TM Act, 1999 otiose. In other words, the legislature may not be said to have intended not to provide a remedy where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered.
44. The Statement of Objects and Reasons of the TM Act 1999 explain that sub-section (5) of Section 29 "seeks to prevent a person from adopting someone else's trade mark as part of that person's trade name or business name by explicitly providing that such action shall also constitute an infringement under this Act. This provision will bring this clause in harmony with the proposed amendments to Sections 20 and 22 of the Companies Act, 1956.” Sections 20 and 22 of the CA have been amended to provide that where the name of a company resembles a registered trade mark, then the registration of the company in that name can be refused. The ROC is expected to gather information from the TM Registry. Under Section 22(5) of the CA, the owner of the registered trade mark can apply to have the name of a company that is purportedly infringing the mark cancelled. All of this only strengthens the conclusion that where Section 29(5) offers a high degree of protection where both the elements envisaged in that provision exist, it is not meant to preclude the owner of a registered mark remediless when only the first and not the second element exists.
48. In Mahendra & Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited (2002) 2 SCC 147, the case before the Supreme Court pertained to the grant of an injunction against the Defendant using, in any manner, as a part of its corporate name or trading style the words Mahindra & Mahindra or any word(s) deceptively similar to Mahindra or and/or Mahindra & Mahindra so as to pass off or enable others to pass off the business and/or services of the Defendant as those of the Plaintiffs or as emanating from or affiliated or in some way connected with Plaintiffs. The Defendant contended that its products were in no way similar to that of the Plaintiffs and that the business carried on by it did not overlap with the business of any of the companies enlisted by the Plaintiffs. The Supreme Court held that by using the Plaintiffs trademark as a part of its corporate name, the Defendant had committed the fraud of passing off its business and/or services as that of the Plaintiffs.
49. In Kalpataru Properties Private Limited v. Kalpataru Hospitality & Facility Management 2011 (48) PTC 135 (Bom.), the issue was whether an action in passing off was maintainable where the Plaintiff's registered mark was used as part of the Defendant's corporate name and the goods and services dealt with by the parties were in different classes. Following Mahendra and Mahendra, the Court held that a passing off action was maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar.
50. Recently, in Red Hat Inc. v. Mr. Hemant Gupta 2013 1 AD (Delhi) 130, this Court, while dealing with a case which involved the use of a registered trademark as part of its corporate name by the Defendant, held that the Plaintiff could seek a remedy for an infringement under Section 29(4) as well as Section29(5) of the TM Act 1999.
51. The legal position emerging as a result of the above discussion may be summarised as under: (a) Section 29(5) of the TM Act 1999 relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered. (b) This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. For the purpose of Section 29(5) of the TM Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.
(c) However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. Where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, the owner or proprietor of the registered trade mark is not precluded from seeking a remedy under Section 29(4) of TM Act 1999 if the conditions attached to Section 29(4) are fulfilled.
(d) Given the object and purpose of Section 29(1) to
(4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) otiose. The purpose of Section 29(5) was to offer a better protection and not to shut the door of Section 29(4) to a registered proprietor who is able to show that the registered mark enjoying a reputation in India has been used by the infringer as part of his corporate name but his business is in goods and services other than that for which the mark has been registered. (e) A passing off action is maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar.” ii) In another matter of Rolex Sa vs. Alex Jewellery Pvt. Ltd. and Ors. 2009(41) PTC 284 (Del) it was observed as under:
17. Also, in a recent case of Brahmos Aerospace Pvt. Ltd. Vs.
FIIT JEE Limited & Anr. reported in 2014 (58) PTC 90 (Del) this Court came to the conclusion that the trademark BrahMos is a wellknown trademark.
18. In the present case, though prima facie the main activities of the parties concerned are different, the same cannot take away the right of the plaintiff to protect its trademark in view of the fact that once the Court comes to a conclusion that a registered trademark is a wellknown trademark which is covered under the definition of Section 2(1)(zg) of the Act of “well-known trademark”, the same can be protected even in relation to dissimilar goods used by the defendant.
19. A reading of Section 29(4) of the Act would reveal that the said protection qua different goods is earmarked by the Legislature for the trademarks which are either highly reputed or well known or famous trademarks and enjoy either high level of distinctiveness or the marks which are inherently distinctive in nature or has become distinctive due to their repute; the use of which will cause detrimental to the distinctive character and repute of the trademark only when the ingredients of Section 29(4) of the Act are satisfied conjunctively which is sub sections (a), (b) and (c) the infringement qua Section 29(4) of the Act in relation to different goods is attracted. Therefore, the moment BrahMos comes within the range of wellknown trademark, it is even protected in relation to dissimilar services.
20. Even otherwise, the trademark BrahMos can be protected in relation to dis-similar goods in case of chance of likelihood of confusion and deception and a case with that regard is made out. The following decisions are relevant in this regard:- (a) Ciba-Geigy Ltd. and Anr. v. Surinder Singh and Ors. 1998 (18) PTC 545 was a case where the plaintiff was using the mark CIBA, CIBACA in relation to goods different than those of the defendant's. The defendant was using the trade mark CIBACA in relation to filters for motor vehicles. The case of the defendant was that the goods in question were entirely different and as such there was no question of any deception being cause in the minds of the public, when trade mark CIBACA was used in relation to altogether different goods. While coming to the conclusion that the defendant had adopted the mark CIBACA deliberately with the intention of creating confusion in the minds of the public so as to pass off its goods as those of the plaintiff, the Court granted injunction restraining the defendants from using the plaintiff's trade mark by the defendants for altogether different goods, as the use of the trade mark CIBACA by the defendant was held not to be honest. (b) In Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd. AIR 1969 Bom 24, the marks were not in relation to similar goods; the plaintiff's mark "Caltex" pertained to petroleum products, whereas the applicant/ defendants trade was in relation to watches. The court held that though the goods were different, there was a likelihood of injurious association of the defendant's mark in relation to the plaintiff's trade.
(c) In Lego System Aktieselskab and Anr. v. Lego M.
Lemelstrich Ltd. Fleet Street Reports (1983) 154, the plaintiff was using the trade mark Lego in respect of toys, whereas defendant started using the trade mark LEGO in relation to irrigation equipment. Even though the trade mark LEGO was being used for different products, the Court granted injunction against the defendant holding that the plaintiff had established high reputation for the mark Lego which extended beyond the field of toys and construction kits and the mark Lego had acquired distinctiveness as the products of the plaintiff.
(d) In The Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop
Lubricant Co. 1899 (16) RPC 12, the plaintiff was using the trade mark DUNLOP in respect of tyres whereas the defendant was using the same in respect of oil and lubricants. On a suit for passing off action filed by the plaintiff, defendant was restrained from using the mark DUNLOP for its products and for its business name. (e) M/s. Banga Watch Company v. M/s. N.V. Philiphs and Anr., AIR 1983 P and H 418 was a case where the plaintiff M/s. N.V. Philliphs was using the trade mark PHILLIPHS, which had become a household mark and had acquired enviable reputation in India and throughout the world dealing in electrical and electronic goods. The defendant was using the trade mark PHILLIPHS in respect of watches and clocks. The court granted the injunction claimed.
21. Under these facts and circumstances, the plaintiff is entitled for a decree for permanent injunction in terms of Prayer clause (a) of the plaint.
22. As regards the other reliefs with respect to rendition of accounts, damages and delivery up, the same are rejected on account of the fact that parties are primarily involved in different activities. Moreover, the damages in this case have not been proved by the plaintiff.
23. The plaintiff is entitled for costs of the suit. Counsel fee is also fixed at Rs. 30,000/-.
24. The decree be drawn accordingly. The suit as well as the pending applications are disposed of accordingly.
JUDGE SEPTEMBER 15, 2014