Full Text
HIGH COURT OF DELHI
Date of Decision: 4th December, 2024
TATA SONS PRIVATE LIMITED .....Plaintiff
Through: Mr. Achuthan Sreekumar, Mr. Rohil Bansal and Mr. Swastik Bisarya, Advocates.
Through: Nemo.
CPC seeking summary
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the well-known trademark of the plaintiff, passing off their goods and services as that of the plaintiff, along with other ancillary reliefs.
PLEADINGS IN THE PLAINT
2. The plaintiff, Tata Sons Private Limited, is a company duly incorporated in the year 1917 as a body corporate under the Indian Companies Act, 1913. The plaintiff is the promoter and principal investment holding company of various TATA Companies, and is India’s oldest, largest, most trusted and best-known business conglomerate.
3. The plaintiff, being the holding company of the TATA Group of Companies, represents its own and the interests of all Tata companies, as also the image and reputation of the name and well-known trademark TATA and permutations/combinations thereof. The plaintiff is the owner and registered proprietor of the well-known mark TATA and permutations/combinations thereof in class 9 which is the relevant class for the purposes of the instant suit. The trademark registrations/applications of the plaintiff in respect of the plaintiff’s ‘TATA’ and ‘TATA’ formative marks have been filed as document no.14 along with the plaint.
4. The trade name/trademark ‘TATA’ is derived from the surname of the plaintiff’s founder, Shri Jamsetji Nusserwanji Tata, which is a rare patronymic name possessing the distinctiveness of an invented word. The plaintiff, for its own business activities and those of its group companies, subsidiaries and companies promoted by it, has continuously and consistently been using the said trade mark/trade name since its inception in the year 1917 whereas the use of the name/trade mark ‘TATA’ by the predecessors-in-business of the plaintiff dates back to the year 1868.
5. Furthermore, the marks TATA and other TATA formative marks have been acknowledged as well-known by this Hon’ble Court as well as the Trademark Registry. The plaintiff has filed a copy of the list of well-known trademarks maintained by the Indian Trademarks Registry acknowledging the plaintiff’s trademark TATA and its permutations thereof as well-known trademarks within the meaning of Section 2 (1) (zg) read with Section 11(6) of the Trade Marks Act, 1999 as document no.20 of the plaint.
6. The plaintiff, its group companies, subsidiaries as well as the companies promoted by it collectively are India’s largest private-sector employer, comprising of over 100 major operating companies. There are about 29 publicly listed Tata companies with a combined market capitalization of about $311 billion (INR 23.[6] trillion) as on March 31,
2022. The revenue of the Tata companies taken together in 2021-2022 was about $128 billion (INR 9.[6] trillion).
7. The defendant no.1, Anilbhai M. Amrutiya and the defendant no.2, Mayur Kapuriya appear to be the partners of two business entities/firms called M/s Tirumala Electricals and M/s Tirumala Penal located in Rajkot, Gujrat.
8. The defendants claim to be engaged in the business of manufacturing and selling panel boxes, control panels for submersible pumps and metal boxes across all major cities in India including New Delhi.
9. In March 2023, the plaintiff’s counsel came across a trademark application bearing no. 4554263 dated 2nd July, 2020, which had been filed by the defendant no.1 on a ‘proposed to be used’ basis for the mark TATA GOLD/. The plaintiff’s counsel filed an opposition to the same on 27th March, 2023. The application has subsequently been withdrawn vide a withdrawal letter dated 23rd September, 2023.
10. In July, 2023, the plaintiff came to know through various market sources that the defendants’ products i.e., control panel for submersible pump, under the mark TATA GOLD/ were being sold and marketed by the defendants across India including Delhi. Immediately upon coming to know about the defendants’ infringing activities, the plaintiff through their counsel deputed an investigator to conduct an in-depth investigation on the defendants so as to ascertain the exact extent and magnitude of the defendants’ infringing activities. The investigation confirmed that the defendants are selling their products with the impugned marks across the country, including Delhi.
11. Accordingly, the plaintiff filed the present suit on 25th August, 2023 seeking to restrain the defendants from carrying on their infringing activities.
PROCEEDINGS IN THE SUIT
12. On 28th August, 2023, this Court granted an ex parte ad interim injunction in favour of the plaintiff restraining the defendants from using, manufacturing, selling or offering for sale any electrical or electronic or any other cognate and allied products under the brand name 'TATA', 'TATA GOLD' or any other mark consisting of the word 'TATA' or any other deceptively similar mark, which in any manner infringes upon the Plaintiffs registered and well-known mark 'TATA'. This Court also appointed two Local Commissioners to visit the defendants’ premises.
13. The Local Commissioners conducted the commission on 5th September, 2023 at the defendants’ premises. A total of 275 products bearing the plaintiff’s ‘TATA’ mark were seized by the Local Commissioners.
14. On 22nd January, 2024 the parties were referred to the Delhi High Court Mediation and Conciliation Centre to attempt to settle their disputes but the mediation proceedings were not successful.
15. The injunction order dated 28th August, 2023 was made absolute on 27th May, 2024.
16. Vide order dated 2nd August, 2024 it was noted that the defendants have not filed their written statement within the maximum permissible period of 120 days and their right to file the same was closed. Further, due to the non-appearance of the defendants on the past two dates, the defendants were also proceeded against ex-parte.
17. In view of the above, the counsel for the plaintiff has filed the present application under Order XIII-A of the Code of Civil Procedure, 1908 for passing of a summary judgment.
18. Notice in the present application was issued on 21st October, 2024. However, neither a response has been filed to the present application nor has anyone entered appearance on behalf of the defendants.
ANALYSIS AND FINDINGS
19. I have heard the submissions of the counsel for the plaintiff and also perused the material on record.
20. The plaint has been duly verified and is also supported by the affidavit of the plaintiff. In view of the fact that no written statement has been filed on behalf of the defendants, 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 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.
21. Therefore, I am of the opinion that no purpose would be served by directing the plaintiff to lead ex parte evidence by filing an affidavit of examination in chief and the plaintiff is entitled to a summary judgment.
22. From the averments made in the plaint and the evidence on record, the plaintiff has been able to prove that the plaintiff is the registered proprietor of the well-known “TATA” marks.
23. A perusal of the Defendants’ marks TATA GOLD/ makes it apparent that the defendants have been infringing the plaintiff’s registered and well-known “TATA” trademarks.
24. Based on the discussion above, a clear case of infringement of trademarks is made out. The defendants have taken unfair advantage of the reputation and goodwill of the plaintiff’s trademark and have also deceived the unwary consumers of their association with the plaintiff by dishonestly adopting the plaintiff’s registered marks without any plausible explanation. Therefore, the plaintiff has established a case of passing off as well.
25. At this stage, it may be relevant to note that the defendants entered appearance in the present suit on 22nd January, 2024, however, the defendants chose not to appear in the proceedings subsequently. Further, no communication on behalf of the defendants has been placed on record in respect of the allegations of the plaintiff in this suit.
26. Since the defendants 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 have no defence to put forth on merits.
27. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764, this Court has observed as under:
91. Rule 3 of Order XIIIA, CPC, as applicable to commercial disputes, empowers the Court to grant a summary judgement against the defendant where the Court considers that the defendant has no real prospects of successfully defending the claim and there is no other compelling reason why the claim should not be disposed of before recording of oral evidence. The expression “real” directs the Court to examine whether there is a “realistic” as opposed to “fanciful” prospects of success. This Court is of the view that the expression “no genuine issue requiring a trial” in Ontario Rules of Civil Procedure and “no other compelling reason…..for trial” in Commercial Courts Act can be read mutatis mutandis. Consequently, Order XIIIA, CPC would be attracted if the Court, while hearing such an application, can make the necessary finding of fact, apply the law to the facts and the same is a proportionate, more expeditious and less expensive means of achieving a fair and just result.
92. Accordingly, unlike ordinary suits, Courts need not hold trial in commercial suits, even if there are disputed questions of fact as held by the Canadian Supreme Court in Robert Hryniak (supra), in the event, the Court comes to the conclusion that the defendant lacks a real prospect of successfully defending the claim.”
28. The aforesaid principles are fully applicable in the facts and circumstances of the present case. As elaborated above, the defendants have no real prospect of successfully defending the claims in the present suit. Further, taking into account that the defendants have not set up any defence, there is no compelling reason for the recording of oral evidence.
29. Therefore, this is a fit case where a summary judgment in terms of Order XIII-A of the CPC can be passed in favour of the plaintiff and against the defendants.
30. In view of the foregoing analysis, a decree of permanent injunction in terms of prayer clauses 48 (i) to (iv) of the plaint is passed in favour of the plaintiff and against the defendants.
31. Insofar as the reliefs of damages and costs sought in prayer clauses 48(vi) and (vii) are concerned, reference may be made to the judgment in Hindustan Lever Ltd. v. Satish Kumar, 2012 SCC OnLine Del 1378. The relevant observations are set out below:
32. It is an admitted position that the defendants have been unauthorisedly using the mark ‘TATA’ at least since July 2020, which is evident from their trademark application no.4554263 filed on 2nd July, 2020. In the present case, the Local Commissioner seized a total of 275 products bearing the impugned mark, cumulatively amounting to approximately Rs. 2,03,500. Further, the fact that a TATA GOLD branded printing plate was seized by the Local Commissioner is evidence of the fact that the defendants have been carrying out the infringing activities continuously.
33. The above actions of the defendants clearly prove their malafides and evidences the fact that the infringement being carried out by the defendants is deliberate and intentional. Taking a holistic view, the actions of the defendants are clearly aimed at capitalizing on the plaintiff’s goodwill and reputation.
34. In light of the foregoing analysis, this Court concludes that the defendants conduct not only warrants but also necessitates the imposition of both costs and aggravated damages. Thus, in addition to the decree passed in the terms already mentioned above, taking into account the entire facts and circumstances presented in this case, this Court also awards damages amounting to INR 5,00,000/- in favour of the plaintiff and against the defendants.
35. The plaintiff has provided details of legal costs incurred by the plaintiff in respect of the present suit in paragraph 74 of the present application. For the purposes of calculation of actual costs, the plaintiff shall file its bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 within four weeks.
36. For this purpose, the representatives of the plaintiff shall appear before the taxation officer on 22nd January, 2024, who shall determine the actual costs incurred by the plaintiff in the present litigation.
37. Let the decree sheet be drawn up.
38. All pending applications stand disposed of. AMIT BANSAL, J DECEMBER 4, 2024