Full Text
HIGH COURT OF DELHI
Date of Decision: September 02, 2019
CITI GROUP INC. & ORS. ..... Plaintiffs Represented by: Mr.Chander M.Lall, Sr. Adv. With
Ms.Nancy Roy and Ms.Kangan Roda, Advs.
Mr.Manish Kumar, Mr.Shivam Singh, Mr.Udian Sharma and Mr.Jaideep
Khanna, Advs. for State of Bihar
JUDGMENT
1. The plaintiffs have filed the present suit inter alia seeking a permanent injunction against the defendants from carrying on its business whatsoever under the mark or name CITI, CITI FINANCE SERVICES and CITI with ARC Design, or any other mark/device deceptively or confusingly similar to the plaintiffs’ registered trade mark CITI, CITIBANK, CITIFINANCIAL and the CITI with ACR Design and CITI formative marks and also from manufacturing, selling or offering for sale, advertising, marketing or in any other manner whatsoever or any other mark using the trade mark or any other mark deceptively or confusingly similar to the trademarks of the plaintiffs. The plaintiffs also pray for withdrawal of the registration and/or licenses under the impugned trade mark CITI, CITI FINANCE SERVICE 2019:DHC:4296 and the CITI with ARC Design in favour of the defendants, to hand over to the plaintiffs’ the goods including publications, printed material, letterheads, stickers, business cards and other stationery, billboard and advertising materials or any other material whatsoever bearing CITI, CITI FINANCE SERCICE and the CITI with ARC Design or any other mark deceptively or confusingly similar to the plaintiffs’ registered trade mark and Formative marks, to transfer the domain name www.citifinance.co.in to the plaintiffs and to disclose if there is any other domain name which is identical/confusingly or deceptively similar is being used to that of the plaintiffs mark, render accounts of all transactions and awarding costs.
2. Case of the plaintiffs in the plaint is that the Plaintiff No. 1 is a company organized and existing under the laws of the State of Delaware, United States of America and Plaintiff No. 2 is a wholly owned subsidiary of the Plaintiff No. 1. Plaintiff No. 3 and 4 are the Indian subsidiaries of Plaintiff No. 1. Mr. Jagdish Salwan is the Constituted Attorney of the Plaintiff No. 1, 2 and 3 and Mr. Pradeep Bhalla is the Constituted Attorney of the Plaintiff No. 4.
3. The plaintiffs are the registered proprietors of the marks CITI (work mark), /CITI with ARC Design, bank and CITIFINANCIAL and several CITI Formative marks. The earliest user of the mark CITI by the plaintiffs in India is on 30th January, 1979. In support of the said registrations, plaintiffs have also placed on record the Registration Certificates and Renewal Certificates for the relevant marks. A legal proceeding certification for the registration of the trade mark CITI (word mark) in classes in 35, 36 and 42 bearing No. 1237079 forms part of record.
4. The plaintiffs claim to be doing global banking with well over 22 million customer accounts and conduct business in more than 160 countries and jurisdictions. The plaintiffs’ retail banking network consists of more than 4000 branches across the globe and 20000 ATM worldwide including in India, the earliest being in 1902, with deposits exceeding $300 billion. The plaintiffs have a strong presence in the World Wide Web and are the owners of the domain names “citi”, “Citibank”, “citigroup”, “Citicorp” and “citicards”.
5. According to the plaintiffs, they have invested hundreds of millions of US dollars in promoting its CITI family of marks in India, including an average expenditure of $4.[5] Million in the mid and late 1990s, over $ 10 million from 2000-2005, and over $ 20 million from 2005 till 2017, on credit cards and retail banking alone. The plaintiffs’ claim that their advertising and marketing budget for the Global Consumer Group were $ 1.[8] Billion from 2003 to 2008, in excess of $ 1 Billion from 2009 to 2010 and in excess of $ 1.[4] Billion from 2011 to 2017. The annual turnover/revenue of the plaintiffs in India, from 2010-2015 amounts to over US$600 Billion (approx.). A compact disc containing the annual reports of the plaintiffs have been filed on record.
6. The present suit relates to the misuse of Plaintiffs well-known registered trademark CITI by imitating and fraudulently misleading the general public by operating and running an alleged bank/non-banking finance operations under the name 'CITI FINANCE SERVICE' and offering banking and/or financial services to the general public. The defendant copied the Plaintiffs' registered CITI with Arc Design for the same services as that of the Plaintiffs.
7. The name 'CITI FINANCE SERVICE' used by the Defendants is also deceptively and confusingly similar to the Plaintiffs registered trademark CITIFINANCIAL and the Plaintiffs trading name 'Citicorp Finance (India) Limited' which is the Indian subsidiary of the Plaintiffs, dealing in identical services i.e. banking and finance services.
8. As per the plaintiffs, the Defendants were also committing fraud, by misleading customers into believing that the Defendants' company is associated with the Plaintiffs' banking and financial services. The defendants were also using Plaintiffs' Indian Financial System Code (IFSC) in order to accept monies under the guise of the Plaintiffs' name. The said IFSC is the Code of Noida Branch of the plaintiffs.
9. On 16th December, 2017, when the plaintiffs came to know through their branch in Lucknow through one of its informants about the existence of the Defendant No.1 carrying on business under the name and style of CITI FINANCE SERVICE, it was revealed that defendant No. 1 had an operational branch at Zero Mile Dadar Road, Muzaffarpur, Bihar - 842001 and a customer branch operational in Patna. The Muzaffarpur branch operations were headed by an individual namely Vivek Kumar Gautam, who has been impleaded as defendant No. 2.
10. The operations of Muzaffarpur and Patna branches of Defendant NO. 1 commenced on 15th November 2017 and a grand opening ceremony was held on 25th November 2017 at Muzaffarpur which was presided by the Zonal Manager - Delhi Branch, whose name was not disclosed.
11. Muzaffarpur branch was constructed at a cost of ₹ 80,00,000/-. It had teller counters and all other banking amenities. Defendant No. 1 was accepting cheques and cash to open savings and current accounts for its customers. The minimum deposit required for opening a saving account was ₹ 100,000 and a current account was ₹ 300,000. The customers were also required to fill account opening forms which were held at the branch itself. It was further informed that the Defendant did not issue any passbooks, account statements, cheque books or ATM cards to its customers.
12. It is averred in the plaint that the unique code of the Plaintiffs CITIBANK - Noida Branch was being deliberately used by the Defendants' under the impugned name CITI FINANCE SERVICE in such a manner so as to pass off services as that of the Plaintiffs.
13. The Plaintiffs also conducted an online investigation in order to derive more information on the Defendants' activities and the details of their business operations. A perusal of the online records of the Registrar of Companies, Ministry of Corporate affairs revealed no mention of the either of the Defendants on the register.
14. It is also averred in the plaint that the Defendants were running and operating a website under the impugned mark CITI FINANCE SERVICE being www.citifinance.co.in. However, at the time of filing the present suit, the Plaintiffs observed that the aforesaid impugned domain name and website was not operational and was "under construction".
15. Further, a perusal of the WHOIS information from the website www.whois.com revealed that the domain name www.citifinance.co.in was registered under the name CITI FINANCE' with a New Delhi address and pin code and was created on 16th November 2017.
16. Summons in the suit were issued to the defendants vide order dated 21st December, 2017.Though the defendants were duly served with the summons in the suit however, defendant No. 2 did not file any written statement, hence, his right to file written statement was closed vide order dated 23rd August, 2019.
17. Affidavits were filed on behalf of plaintiffs No.1, 2, 3 and 4 under Order XI Rule VI of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 along with the printouts of the following documents, were filed in support of the instant suit.
18. Affidavit under Section 65-A and Section 65-B of the Indian Evidence Act, 1872 of Yashwant Singh was also filed in support of the electronic documents filed by the Plaintiffs.
19. When the present suit came for hearing before this Court on 21st December, 2017, while granting ad-interim injunction, this Court also appointed Local Commissioner to visit the premises of the defendant in Muzzafarpur, Bihar. As per the report of the Local Commissioner, on inspection conducted at the defendants’ location at Zero Mile Dadar Road, Muzaffarpur, Bihar-842001 on 22nd December, 2017, the impugned marks were found to be used. However, the premises was locked and there was a three-tier security system and a crowd gathered there demanding their money back. During the course of proceedings, the plaintiffs also filed an application under Order 39 Rule 2 A CPC and the documents filed therewith revealed that defendant No. 1 had issued demand drafts including a demand draft in the name of Vandana Kumari, as a beneficiary for INR 10,00,000/bearing No. 123860 presented to the Axis Bank, Muzzafarpur Branch which was returned therefrom as a fake and fraudulent demand draft. Further, defendant No. 1 also issued a demand draft bearing No. 123832 dated 18th December, 2017 for a sum of ₹ 94,000/- against an invoice raised on them for services rendered by Rajray Securex which was found to contain a fake MICR Code with the address of the old Noida Brach of the plaintiffs and the instruments bore the IFSC code of the plaintiff’s Noida Branch.
20. Defendant No.2 appeared before this Court and claimed that the owner of Defendant No.1 was one Mr.Ankit Aggarwal who was also the Director of Defendant No.1 and a resident of Mumbai. However, Defendant No.2 did not give any further details of Mr.Ankit Aggarwal. Learned Senior Counsel for the plaintiffs on 26th April, 2019 pointed out that defendant No.2 Vivek Kumar Gautam has again on his Facebook account namely https:// www.facebook.com/ people/ Vivek-Kumar-Gautam/ 100003649576947 started showing himself as a Branch Manager to Citi Bank. When the said printout was put to Mr.Vivek Kumar Gautam, he denied about the use of this Facebook account however admitted that the photograph on the account was his. Thus, Defendant No.2 was directed to file affidavit about the status of the Facebook account however no affidavit was filed by Defendant No.2. This Court also directed Facebook Co. to place on record the name of the individual who had opened the above mentioned Facebook account. In response to the directions of this Court vide order dated April 26, 2019, learned counsel for the Facebook appeared on 23rd August, 2019 and handed over the report in an envelope according to which the person who opened the account was Vivek Kumar Gautam i.e. the Defendant No.2. Hence the plea of Defendant No.2 that he was merely an employee of Defendant No.1 and had no role to play therein is totally falsified.
21. Considering the nature of documents placed on record by the plaintiffs and the material forthcoming against the defendant No. 2, who had been running defendant No. 1 and considering the fact that defendant No. 2 initially took the name of one Ankit Aggarwal to be running defendant No. 1 and did not give any details of Ankit Aggarwal and the photographs showed that it was defendant No. 2 who had inaugurated the Muzzafarpur Branch of defendant No. 1 and that the documents of the plaintiffs have gone unrebutted for non-filing of the written statement, the plaintiff is entitled to a judgment under Order XIII-A Rule 2 CPC. Consequently, the suit is disposed of passing a decree in favour of the plaintiff and against the defendants in terms of Prayers A(i), A(ii) and A(iii). The plaintiffs have also filed an affidavit of the actual cost incurred on the suit as per which, the plaintiffs claim cost of ₹ 29,43,396.06/- including Court fees, Advocate’s fees, cost paid to the Local Commissioner and miscellaneous expenses. Thus, the cost for a sum of ₹ 29,43,396.06/- is awarded in favour of the plaintiffs and against the defendants jointly and severally.
22. Decree sheet be drawn accordingly. IA 15413/2017 (under Order 39 Rules 1 and 2 CPC) Dismissed as infructuous. IA 11724/2018 (under Order 39 Rule 2A CPC) Learned counsel for the plaintiffs does not press this application. Application is dismissed as not pressed.
JUDGE SEPTEMBER 02, 2019 akb