Full Text
HIGH COURT OF DELHI
Date of Decision: 13th February, 2025
41465/2024 TATA POWER SOLAR SYSTEMS LIMITED & ANR. .....Plaintiffs
Through: Mr. Peeyoosh Kalra, Mr. C.A.
Brigesh, Ms. Krisna Gambhir & Ms. Simranjot Kaur, Advocates.
Through: Ms. Aishwarya Kane, Advocate for D-4.
Mr. Rishabh Dev Mishra, Advocate for D-5.
Mr. Arvind Singh Negi, Advocate for D-6.
Mr. Aayushmaaan Vatsyayana, Advocate for D-7.
Mr. Kishan Rawat, Advocate for D-8.
Mr. Sagar Aggarwal & Ms. Kanika Baweja, Advocates for D-9.
Mr. Santosh Kumar Rout, Standing Counsel for PNB
Ms. Shivani Shah, Mr. Amandeep Singh & Mr. Dev Bhardwaj, Advocates for D-12.
Mr. Krishna Kumar Sharma, Mr. Manokul Chandra & Ms. Srishti Guha, Advocates for D-13.
Mr. Sarfaraz Khan, Advocate for D- 14.
Ms. Mrinal Ojha, Mr. Debarsh Dutta, Ms. Nikita Rathi & Mr. Arjun Mookerjee, Advocates for D-19.
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademark of the plaintiffs, passing off their goods and services as that of the plaintiffs, along with other ancillary reliefs.
PLEADINGS IN THE PLAINT
2. Plaintiff no.1, Tata Power Solar Systems Limited, was incorporated in 1989 and is the one of the largest solar company in India specializing in high efficiency photovoltaic (PV) module manufacturing and comprehensive engineering, procurement and construction (EPC) solutions. Plaintiff no.1 is the subsidiary of Tata Power Renewable Energy Limited, which is itself a subsidiary of Tata Power Company Limited (‘TPCL’).
3. Plaintiff no. 2 was established through its predecessor-in-title in the year 1917 as a body corporate. The plaintiff no. 2 is the promoter and principal investment holding company of various TATA Companies including TPCL which are engaged in business of wide-range of products and services. On 14th September, 2012, the plaintiff no.1 entered into a Brand Equity and Business Promotion agreement with the plaintiff no.2 to pool their resources and make a co-operative effort to promote a unified common ‘TATA’ brand.
4. It is asserted in the plaint that the trademark ‘TATA’ derived from the surname of the plaintiff no.2’s founder is distinctive in nature. Due to its continuous and extensive use since 1917, the said mark has acquired a secondary meaning, associating it exclusively with the conglomeration of ‘TATA’ Companies.
5. The plaintiffs have been using ‘TATA’ and ‘TATA POWER SOLAR’ formative trademarks since February, 2020. The plaintiff no.2 is the registered proprietor of the trademark ‘TATA POWER SOLAR’ and its formative marks under different classes in India. The relevant trademark registrations of the plaintiffs as given in paragraph 9 of the plaint are set out below: Registration no. Trademark Classes Date of Application/ User Date Valid Upto 839726 TATA (Word Mark) 9 03.02.1999 03.02.2029 838425 9 27.01.1999 27.01.2029 4159218 TATA POWER (Word Mark) 9, 11 and 37 26.04.2019 26.04.2029 5460092 4, 9, 19, 37, 40 and 42 24.05.2022 24.05.2032 The Certificates of Registrations are filed as documents no. 16, 17 and 18 of the documents filed along with the plaint. All the aforesaid trademark registrations remain valid and subsisting.
6. The products of the plaintiffs bearing ‘TATA POWER SOLAR’ formative trademarks are advertised through the plaintiffs’ website, ‘www.tatapowersolar.com’. The domain name ‘www.tatapowersolar.com’ was registered on 13th June, 2012. Since then, the plaintiffs have been using the said domain name continuously and uninterruptedly.
7. Over the years, the plaintiff no.1 has earned various awards and accolades on account of its ambitious approach towards creating innovative solutions to meet the growing energy demands while reducing carbon footprints. The plaintiffs also have presence on various social media platforms such as Facebook, Instagram, YouTube, etc. As a result of their online presence and several awards earned by the plaintiffs in the past four years, the trademark ‘TATA POWER SOLAR’ and other registered trademarks of the plaintiffs enjoy immense reputation and goodwill among consumers.
8. During the period between 2020-2024, the sales and advertising expenses of the plaintiffs’ products under the brand ‘TATA POWER SOLAR’ are given in paragraph 19 of the plaint. The sales turnover of the plaintiffs’ products sold under ‘TATA POWER SOLAR’ brand for the financial year 2023-2024 amounts to Rs. 1907 crores (approx.) and the advertising expenses for the same period amount to Rs. 23 crores.
9. Defendant no.1 is the registrant of the impostor domain name ‘www.tatapowersolardealership.co.in’ and the defendant no.2 is the registrant of the impostor domain name ‘www.tatapowersolars.com’. Defendant no. 17 is the registrant of the impostor domain name ‘www.tatapowersolars.org’ and the defendant no. 18 is the registrant of the impostor domain name ‘www.tatapowersolarroof.com’ (collectively referred to as ‘impugned domain names’). Defendant no.3 is Ashok Kumar/ John Doe.
10. The defendant no. 4, Hosting Concepts B.V., is the Domain Name defendant no. 2. The defendant no. 19, GoDaddy.com LLC, is the Domain Name Registrar for the impugned domain name of the defendant no. 17. The defendant no. 20, INWX GmbH & Co. KG, is the Domain Name Registrar for the impugned domain name of the defendant no.18.
11. The defendants no. 5-14 are Telecom Service Providers (TSPs) and Head Offices of Banks wherein the defendants no.1-2 and the defendants no.17-18 (hereinafter ‘imposter defendants’) have their bank accounts. The defendants no. 15 and 16 are the Department of Telecommunications (‘DoT’) and Ministry of Electronics and Information Technology (‘MEITY’) respectively.
12. Between February, 2024 to April, 2024, the plaintiffs were alerted that the impostor defendants are duping many innocent persons. The imposter defendants are infringing the trademark ‘TATA’ and ‘TATA SOLAR POWER’ formative trademarks of the plaintiffs. The imposter defendants are using the plaintiffs’ marks as trade names, as part of their domain name, email address (info@tatapowersolardealership.co.in; help@tatapowersolars.com; info@tatapowersolars.com; sales@tatapowersolars.com; and official@tatapowersolars.com, subsidy@tatapowersolarroof.com) etc.
13. It is the case of the plaintiffs that the imposter defendants are contacting the prospective customers of the plaintiffs via calls through their mobile numbers +91-9109840660; +91-7384040589; +91-7501191497 and +91-9163594301, +91-7761081072; +91-7773055096 and +91- 8420553761, and messages through WhatsApp claiming themselves to be employees of the plaintiff no.1 company and collecting various sums of money as well as duping innocent customers under the promise of providing services and/or dealerships of the plaintiffs.
14. Accordingly, the plaintiffs filed the present suit on 16th May, 2024 seeking to restrain the defendants from carrying on their infringing activities.
PROCEEDINGS IN THE SUIT
15. On 20th May, 2024, while issuing summons in the suit, this Court granted an ex-parte ad interim injunction in favour of the plaintiffs and restrained the defendants no. 1 to 3 from using the marks ‘TATA’, ‘TATA POWER’, ‘TATA POWER SOLAROOF’,, or any other formative marks of the plaintiffs. Further, this Court issued directions to the defendants no.4 to 16 in respect of the domain names/ mobile numbers/ bank accounts of the defendants no. 1 to 3.
16. Subsequently, the plaintiffs’ moved two fresh applications, i.e. I.A. 35874/2024 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter “CPC”) as well as I.A. 35875/2024 under Order I Rule 10 (2) of CPC. Vide order dated 8th August, 2024, the plaintiffs’ impleadment application being I.A. 35875/2024 was allowed and the defendants no.17-20 were impleaded as defendants in the present suit.
17. Vide order dated 21st August, 2024, the Joint Registrar noted that the defendants no.1 to 3 were duly served through email on 16th July, 2024. Despite this, the defendants no.1 to 3 did not enter appearance and no written statement(s) were filed on behalf of the defendants no.1 to 3.
18. Vide order dated 12th September, 2024, the plaintiffs’ I.A. 39284/2024 under Order VI Rule 17 of CPC for amendment of plaint was allowed. On the same date, ex-parte ad interim injunction was granted in favour of the plaintiffs and the newly impleaded defendants no. 17-18 were restrained from using the marks ‘TATA’, ‘TATA POWER’, ‘TATA POWER SOLAROOF’,, or any other formative marks of the plaintiffs. Further, this Court issued directions to the defendants no.19-20 in respect of the domain names/ email address of the defendants no.17-18.
19. This Court vide order dated 19th September, 2024 modified the exparte ad interim injunction order dated 12th September, 2024.
20. Vide order dated 24th October, 2024, notice was issued in I.A. 41465/2024 under Order XIII-A of the Commercial Courts Act, 2015 for summary judgment.
21. The Joint Registrar recorded in the order dated 6th December, 2024 that the defendants no.17-18 had been served through email on 29th October
2024. Further, the right of the defendants no.1 to 3 to file written statement(s) was closed.
22. Despite service, neither the defendants no.1-3 and 17-18 entered appearance nor did they file a written statement.
23. Counsel for the plaintiffs submits that this is a fit case where a summary judgment in terms of Order XIII-A of the Code of Civil Procedure, 1908 (CPC) as applicable to commercial disputes of a specified value, read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022, deserves to be passed in favour of the plaintiffs and against the defendants.
ANALYSIS AND FINDINGS
24. I have heard the submissions of the counsel for the plaintiffs and perused the material on record.
25. The plaint has been duly verified and is also supported by the affidavit of the plaintiffs. In view of the fact that no written statement has been filed on behalf of the defendants no.1-3 and 17-18, all the averments made in the plaint have to be taken to be admitted. Further, since no affidavit of admission/denial has been filed on behalf of the defendants no.1-3 and 17- 18 in respect of the documents filed with the plaint, in terms of Rule 3 of the Delhi High Court (Original Side) Rules 2018, the same are deemed to have been admitted.
26. Therefore, I am of the opinion that no purpose would be served by directing the plaintiffs to lead ex parte evidence by filing an affidavit of examination in chief and the plaintiffs are entitled to a summary judgment.
27. From the averments made in the plaint and the evidence on record, the plaintiffs have been able to prove that the plaintiffs are the registered proprietor of the mark ‘TATA’ and ‘TATA POWER SOLAR’ formative marks.
28. A bare perusal of the impugned domain names and email addresses used by the defendants no.1-3 and 17-18 makes it apparent that the said defendants have slavishly copied the plaintiffs’ registered and well-reputed trademark ‘TATA’ and ‘TATA POWER SOLAR’ formative marks and the products of the said defendants bearing the impugned marks are being used for identical services, i.e. solar energy solutions.
29. Based on the discussion above, a clear case of infringement of trademarks is made out. The plaintiffs, through their annual turnover and promotional expenses, have also been able to show their goodwill and reputation in respect of the aforesaid trademarks among the members of the trade and public. The defendants no.1-3 and 17-18 have taken unfair advantage of the reputation and goodwill of the plaintiffs’ trademarks and have also deceived the unwary consumers of their association with the plaintiffs by dishonestly adopting the plaintiffs’ registered marks without any plausible explanation. Therefore, the plaintiffs have established a case of passing off as well.
30. At this stage, it may be relevant to note that the defendants no.1-3 and 17-18 did not appear before the Court, despite service of summons. Further, no communication on behalf of the defendants no.1-3 and 17-18 have been placed on record in respect of the allegations of the plaintiffs in this suit.
31. Since the defendants no.1-3 and 17-18 have failed to take any requisite steps to contest the present suit, despite having suffered an ad interim injunction order, it is evident that the defendants no.1-3 and 17-18 have no defence to put forth on merits.
32. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764, this Court has observed as under:
33. The aforesaid principles are fully applicable in the facts and circumstances of the present case. As elaborated above, the defendants no.1- 3 and 17-18 have no real prospect of successfully defending the claims in the present suit. Further, taking into account that the defendants no.1-3 and 17-18 have not set up any defence, there is no compelling reason for the recording of oral evidence.
34. Therefore, this is a fit case where a summary judgment in terms of Order XIII-A of CPC can be passed in favour of the plaintiffs and against the defendants no.1-3 and 17-18.
RELIEF
35. In view of the foregoing analysis, a decree of permanent injunction is passed in favour of the plaintiffs and against the defendants no.1-3 and 17- 18 in terms of prayer clauses 32 (a) and 32 (b) of the amended plaint.
36. The decree is passed in favour of the plaintiffs and against the defendant no. 20, directing it to suspend the domain name ‘www.tatapowersolarroof.com’.
37. The defendants no.4 and 19 submit that they have complied with the directions of the Court and have suspended the domain names ‘www.tatapowersolardealership.co.in’, ‘www.tatapowersolars.com’ and ‘www.tatapowersolars.org’ respectively.
37.1. In view thereof, the reliefs sought against the aforesaid defendants stand satisfied.
38. Similarly, reliefs claimed under clauses 32 (d) and 32 (f) stand satisfied as per orders dated 20th May, 2024 and 19th September, 2024.
39. Insofar as prayer clause 32 (e) is concerned, the defendants no. 6 to 14/ Banks are directed to freeze all the bank accounts mentioned below: ACCOUNT NUMBER RESPECTIVE BANKS 400519210000006 Bank of India (D[6]) 110161081084 Canara Bank (D[7]) 110177058203 Canara Bank (D[7]) 110182430078 Canara Bank (D[7]) 5540938159 Central Bank of India (D[8]) 219401000007090 Indian Overseas Bank (D[9]) 18290100048682 Federal Bank of India (D10) 0569000100543045 Punjab National Bank (D11) 5866000100059983 Punjab National Bank (D11) 219401000007090 Indian Overseas Bank (D[9]) 60483735630 Bank of Maharashtra (D12) 60484882211 Bank of Maharashtra (D12) 41394259006 State Bank of India (D13) 23563211005858 UCO Bank (D14)
40. After freezing the said bank accounts, the defendants no. 6 to 14 are directed to transfer the funds in the aforesaid bank accounts to Reserve Bank of India’s Depositor and Education Awareness Fund, within four (4) weeks from today.
41. Let an affidavit of compliance be filed on behalf of the defendants NO. 6 to 14/ Banks, within six (6) weeks from today.
42. The counsel for the plaintiffs does not press for the remaining reliefs prayed for in the suit.
43. Let the decree sheet be drawn up accordingly.
44. The pending applications stand disposed of. AMIT BANSAL, J FEBRUARY 13, 2025