Full Text
HIGH COURT OF DELHI
Date of Decision: 20th October, 2022
TATA SONS PRIVATE LIMITED ..... Plaintiff
Through: Mr. Achuthan Sreekumar & Mr. Rhil Bansal, Advocates. (M:9999756265)
Through: Mr. Depankar Mishra &Mr. Karmanya Dev Sharma, Advocate for
D-1. (M:9790169104)
JUDGMENT
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff - Tata Sons Private Limited against Defendant No.1 - Anjani Bagaria and Defendant No.2 - Mazing Retail Private Limited seeking permanent injunction restraining infringement of registered trademarks, passing off, dilution and tarnishment of trademarks.
3. The Plaintiff – Tata Sons Private Limited is the promoter and principal investment holding company of various TATA Companies, that is India's oldest, largest, most trusted and best-known business conglomerate. The TATA Group of Companies was incorporated in 1917 and is is India's largest private sector employer comprising of 100 major operating companies, 29 public listed Tata companies with a combined market capitalisation of Rs.9,30,000 crores and more than 7,50,000 people are employed worldwide. The Plaintiff is the owner and registered proprietor of the well-known trademark and copyright‘ TATA’ and the device marks and.
4. The case of the Plaintiff is that in August, 2021, it was informed that the Defendant No. 1 who is the proprietor of M/s Jay Maa Shakti Enterprises is selling manual and battery operated sprayer pumps and knapsack sprayer bearing the brand TATA'S STAR SHAKTI (hereinafter, „impugned products‟) through the Defendant No.2's online portal www.mazing.store. Screenshot of the same is as under:
5. Vide order dated 15th November 2021, an ex parte ad-interim injunction was granted in the following terms: “24. Upon hearing the submissions advanced by learned counsel for the plaintiff and perusal of the plaint, application for interim injunction and documents aimexed thereto, this Court is of the opinion that a prima facie case for grant ex-parte ad interim injunction in favour of plaintiff and against the defendants is made out.
25. Accordingly, till further orders, defendants, their partners or proprietors as the case may be, their officers, servants and agents and/ or any one acting for and on their behalf are restrained from manufacturing, selling, offering for sale, supplying, advertising, directly or indirectly dealing in any business unauthorizedly using the Plaintiffs Trade mark and permutations/ combinations thereof, in relation to any goods or services in printed and/ or in any other media, electronic online version or in any other form resulting in infringement, passing off, unfair competition and dilution of plaintiffs rights.”
6. Vide order dated 27th July, 2022, the Court had directed Defendant No.1 to file an affidavit containing complete statement of accounts of M/s Jay Maa Shakti Enterprises and the quantum of sale of the impugned products. An affidavit in compliance with the said order has been filed by the Defendant No.1. The said affidavit reads as under:
7. Today, Defendant No. 1 - Ms. Anjani Bagaria is present physically before the Court. She submits that she purchased the ‘TATA’ branded products from the market and sold them physically as well as on some online platforms. She further submits that she has no objection if the suit is decreed as she does not intend to use the mark ‘TATA’ in future for any of her products. Upon a query from the Court she submits that she is also in the business of selling products such as garden sprayer, raincoats, mosquito bats and other similar products. Ld. counsel for the Plaintiff submits that in view of the statement made by Defendant No.1 if some token costs is paid to the Plaintiff the suit can be decreed.
8. The parties have amicably resolved the disputes post the filing of the affidavit of Defendant No.1 and the Defendants have no objection if the suit is decreed in terms of prayer paragraphs 53 (i) to (iv) of the plaint. The said prayer is as follows:
53. In light of the foregoing, it is respectfully prayed that this Hon'ble Court may be pleased to issue:
(i) An order for permanent injunction restraining the
Defendants, their partners or proprietors, as the case may be, their officers, servants and agents from manufacturing, selling, offering for sale, supplying, advertising, directly or indirectly dealing in any business unauthorizedly using the Plaintiff s wellknown trademarks TATA and permutations / combinations thereof, amounting to infringement of the Plaintiff s registered trademarks the details of which are given at serial no.11 (at pages 137 to 230), serial no. 13 (at pages 235 to 267), serial no. 14 (at pages 268 to 285), serial no. l[5] (at pages 286 to 333), serial no. 16 (at pages 334 to 378), serial no. l[7] (at pages379 to 430) and serial no. 18 (at pages 431 to 452) of the list of documents filed along with the instant suit; and
(ii) An order for permanent injunction restraining the
Defendants, their partners or proprietors, as the case may be, their officers, servants and agents from manufacturing, selling, offering for sale, supplying, advertising, directly or indirectly dealing in any business unauthorizedly using the Plaintiff s wellknown trademarks TATA and the device marks and and / or any mark(s) confusingly or deceptively similar to the said marks amounting to passing off of the Defendants' goods / services as that of the Plaintiff s; and (iii)An order of permanent injunction restraining the Defendants or their agents, or any other person acting for and on its behalf etc. from engaging in any act whatsoever that will result in the dilution and tarnishment of the Plaintiff s well-known trademark TATA; and (iv)An order of permanent injunction directing the Defendant No' 2 to take down all references to the infringing products bearing the Plaintiff s well-known mark TATA from its website i'e' www.mazing.store.
9. Accordingly, the suit is decreed in the terms of the prayer paragraphs 53 (i) to (iv) of the plaint. Additionally, the parties agree as under:
(i) Insofar as online listings are concerned, the Defendant No.1 has agreed to remove all references to the mark ‘TATA’ qua its products on online platforms and shall take steps within four weeks for removal of the same upon notice being received from the Plaintiff.
(ii) Insofar as costs are concerned, the Defendant No.1 shall pay the token costs of Rs.25,000/- to the Plaintiff within a period of four weeks. If, however, Defendant No.1 indulges in use of the mark ‘TATA’ or and other similar mark in any manner again, the Plaintiff is free to avail of its remedies in accordance with law including seeking of simple and punitive damages against Defendant No.1 in the future.
(iii) Insofar as the impugned products seized by the Local
Commissioner are concerned, the ‘TATA’ label shall be removed from all these products before they are sold. The packaging and label of the impugned products shall also be destroyed in front of the Plaintiff's representative. The Plaintiff’s representative shall visit the Defendant’s premises for the same, on 3th November, 2022 or on any other convenient date as may be agreed between the Counsels for the parties.
(iv) Insofar as the Defendant No. 2 is concerned, none appears.
Since Defendant no.2 is only an online platform selling the impugned products of Defendant no.1, the present order shall be applicable upon Defendant No.2 as well.
10. The suit is decreed accordingly.
11. Decree sheet be drawn. All pending applications are disposed of.
12. In view of the resolution of the dispute between the parties, full court fee is refunded to the Plaintiff through Counsel.
PRATHIBA M. SINGH JUDGE OCTOBER 20, 2022 dj/kt