2013 (12) TMI 116 - HC - Companies Law

Court rules in favor of plaintiffs, orders injunctions, domain transfer, damages, and costs.

The court decreed the suit in favor of the plaintiffs, granting mandatory and permanent injunctions, ordering the transfer of domain names to the ... Infringement of registered trademark - Passing off and delivery up - Transfer of domain name Rendition of accounts – Held that:- No written statements have been filed on behalf of the defendants and no reply was given - the averments of the plaintiff and the documents filed by them are uncontroverted - there is no reason not to accept the same - The plaintiffs have filed a host of documents to establish their case - The plaintiffs have in excess of a hundred domain names worldwide, it is evident that the use of the domain name www.amexgroup.in by the defendants is likely to cause confusion among consumers and members of the trade - Relying upon Yahoo! Inc Vs. Akash Arora & Anr [1999 (2) TMI 630 - DELHI HIGH COURT]. The plaintiffs have been vigilant about protecting and defending their intellectual property rights, as they have placed on record the proceedings in the various other suits filed by the plaintiffs wherein the Courts, as well as arbitration forums, have protected the rights of the plaintiffs - The Plaintiffs and the Defendants are operating in the same sphere of activity i.e of financial services - A printout of the defendant’s website reveals that the defendants offer financial and investment services which are identical to the services for which the plaintiffs’ marks are registered - the plaintiffs have successfully been able to establish that the defendants are violating the statutory rights of the plaintiffs’ registered trademark under Section 29 of the Act and are also passing off their services as those of the plaintiffs causing deception and confusion. Punitive damages are founded on the philosophy of corrective justice - the purpose involved is to discourage parties from indulging in acts of deception - The Plaintiffs are also entitled to the damages of Rs 5 lakhs in addition to costs of the suit – Decided in favour of Petitioner. Issues Involved:1. Infringement of registered trademark.2. Passing off.3. Delivery up.4. Rendition of accounts.5. Transfer of domain names.6. Unauthorized use and unfair competition.7. Damages and costs.Detailed Analysis:1. Infringement of Registered Trademark:The plaintiffs, corporations under the laws of New York and Delaware, USA, and the Companies Act, 1956, India, filed a suit against the defendants, a company incorporated under the Companies Act, 1956, and its directors, alleging infringement of their registered trademark 'AMEX.' The plaintiffs argued that they have been using the 'AMERICAN EXPRESS' and 'AMEX' marks since 1850 and 1969, respectively, and have derived vast revenues from services provided under these marks. The plaintiffs' earliest registration for 'AMERICAN EXPRESS' in India dates back to June 1976 in class 16, and they have valid registrations for 'AMEX' and AMEX formative marks in classes 35, 36, 39, and 42. The defendants were using the 'AMEX' mark in financial services, which overlaps with the plaintiffs' businesses, constituting unauthorized use and infringement.2. Passing Off:The plaintiffs claimed that the defendants were trading under the name 'Amex Financial Services Private Limited' and were engaged in financial services identical to those provided by the plaintiffs. The plaintiffs submitted that the defendants' use of the 'AMEX' mark was an attempt to pass off their services as those of the plaintiffs, taking undue advantage of the plaintiffs' reputation and success. The court noted that the defendants' use of the impugned mark had already led to confusion and deception among the public and the trade, associating the marks 'AMERICAN EXPRESS' and 'AMEX' exclusively with the plaintiffs.3. Delivery Up:The plaintiffs sought a decree of mandatory injunction to transfer the domain names www.amexgroup.in and www.americanexpress.in, allegedly registered in the defendants' name, to the plaintiffs. The court observed that the plaintiffs had over a hundred domain names worldwide containing 'AMEX,' and the use of the impugned domain names by the defendants was likely to cause confusion among consumers and members of the trade.4. Rendition of Accounts:The plaintiffs sought a decree for the rendition of accounts against the defendants and a decree for the amount found due upon accounts being taken. The court proceeded under Order 8 Rule 10, CPC, as the defendants did not file a written statement despite service, and the plaint was duly verified and supported by an affidavit.5. Transfer of Domain Names:The plaintiffs claimed that the domain names www.amexgroup.in and www.americanexpress.in were under the defendants' control. The court noted that the defendants' unauthorized use of these domain names constituted passing off and infringement of the plaintiffs' trademarks, amounting to acts of unfair competition.6. Unauthorized Use and Unfair Competition:The plaintiffs argued that the defendants' adoption and unauthorized use of the impugned trade name/mark/domain name constituted passing off and infringement of the plaintiffs' trademarks and amounted to acts of unfair competition. The court observed that the defendants' use of the impugned mark was fraudulent and had already led to confusion and deception among the public and the trade.7. Damages and Costs:The court referred to the decision in Hero Honda Motors Ltd. Vs Shree Assuramji Scooters, which discussed the aspect of damages in a suit for infringement. The court observed that punitive damages are founded on the philosophy of corrective justice and must be granted to discourage parties from indulging in acts of deception. Accordingly, the suit was decreed in favor of the plaintiffs to the extent of prayers A and C made therein, and the plaintiffs were entitled to damages of Rs 5 lakhs in addition to the costs of the suit to be borne by the defendants.Judgment:The court decreed the suit in favor of the plaintiffs, granting the mandatory and permanent injunctions sought, ordering the transfer of the domain names to the plaintiffs, and awarding damages of Rs 5 lakhs along with the costs of the suit. The defendants were found to have infringed the plaintiffs' registered trademark, engaged in passing off, and caused confusion and deception among the public and the trade.