TaxTMI 
TaxTMI 
2013 (12) TMI 116
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....o seek a decree of rendition of accounts against the defendants and a decree for the amount found due upon accounts being taken. They further seek a decree of mandatory injunction to transfer the domain name www.amexgroup.in and www.americanexpress.in which are allegedly registered in the name of the defendants and a direction to be issued to the National Internet Exchange of India to transfer the said domain names in the name of the Plaintiffs. 2. It is the case of the plaintiffs that they - by themselves and their related companies are a leading global financial services organisation engaged, inter alia in the business of banking and finance, investment and insurance, credit and charge card services, travel, foreign exchange and other services 3. The Plaintiffs commenced the use of the AMERICAN EXPRESS mark in 1850 - both as a trade mark, as well as a trade name and since then, the Plaintiffs have expanded the use of the AMERICAN EXPRESS mark to include a variety of financial services. The plaintiff's usage in India can be traced back to the 1950s. 4. It is the case of the Plaintiff that the Plaintiffs and their related companies have been referred to as AMEX since their very ....
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....f publication in "The Free Press Journal" (English) and "Nav Shakti" (Hindi) in the Mumbai Editions. Citations of the same have been filed on record. 9. In spite of service, the defendants failed to appear before this court and vide order dated 03.10.2013, the defendants were proceeded ex parte. The Court also decided to proceed under Order 8 Rule 10, CPC since the defendant did not file a written statement despite service, and the Plaint is not only duly verified, but is also supported by the affidavit of Dianne K. Cahill, the Secretary and Principal Officer of Plaintiff no 3. 10. The first submission of learned counsel for the Plaintiffs is that the Plaintiffs' earliest registration for the trademark "AMERICAN EXPRESS" in India dates back to June 1976 in class 16. Learned counsel submits that the plaintiffs also have valid registrations for the trade mark AMEX and AMEX formative marks. The registrations of the Plaintiffs are, inter alia, in classes 35, 36, 39 and 42 which include the marks "AMEXBANK" and "AMEXSELECTS". Learned counsel submits that internationally, the Trade mark AMEX is registered in over twenty jurisdictions of the world, the oldest dating back to the year 197....
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....o response was received. 16. The plaintiffs have also placed on record the action initiated by them against the defendant no 1 company under Section 22 of the Companies Act, 1956 for removal of the defendant no 1 company name from the Register of Companies, on the grounds that the company name of defendant no 1 was in violation of the plaintiff's registered trademark AMEX. However, the same was disallowed vide order dated 10.08.2010 - observing that the name of the defendant no 1 did not have near resemblance with the trademark AMEX, as the name of the defendant no 1 comprised two words in addition to AMEX, being, "Financial" and "Services". The aforesaid order by the Registrar of Companies (ROC) also observed that there are separate competent authorities under the Trademarks Act, 1999 to deal with the plaintiffs allegations of infringement of its mark AMEX. 17. The plaintiffs claim that the defendant no 1 company had applied for registration of the trademark "AMEX" in class 36, which application now stands abandoned as per the records of the Trade Marks Registry. It is submitted that a perusal of the first examination report issued by the Trade Marks Registry to the defendants r....
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.... the defendant's adoption and unauthorized use of the impugned trade name/mark/ domain name constitutes passing off and infringement of the plaintiffs' trademarks and amounts to acts of unfair competition. It is submitted that the business of the defendants is identical to the services offered by the plaintiffs and the use of the impugned mark by the defendants in respect of identical services is nothing but an attempt by the defendants to pass off their services as those of the plaintiffs and take undue advantage of the plaintiffs immense reputation, popularity and its status as a well known trademark. Learned counsel submits that the defendants use of the impugned trade mark/ name/domain name is fraudulent and has already led to confusion and deception amongst members of the public and the trade, who associate the marks AMERICAN EXPRESS and AMEX exclusively with the services offered by the plaintiffs. 23. Learned counsel for the plaintiffs further submits that the defendants are violating the plaintiff's statutory rights as only the Plaintiffs have the exclusive right to use the registered trade mark AMEX, AMEX formative marks and/or AMERICAN EXPRESS in relation to the goods and....
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....cial management services; financial analysis and consultation; financial portfolio management; financial research; investment brokerage services; investment consultation; life, health, accident, travel and purchase protection insurance underwriting services; financial risk management services." The said certificate also pertains to classes 35,39 and 42. 27. The plaintiffs have also filed on record registration dated 28.09.1978 in class 16 for the mark AMEXBANK and registration dated 21.07.2005 in class 36 for the mark AMEXSELECTS. The plaintiffs have also filed on record trademark registration certificates for the mark AMEX in international jurisdictions such as South Africa and Australia. The trademark registration in South Africa is of the year 1988 in classes 9, 16, 36 and 39. The trademark registration in Australia is of the year 2006 pertaining to classes 36,39 and 43 and of the year 2001 pertaining to class 36. The plaintiffs have also placed on record a tabulated list of over hundred of their domain names containing the word AMEX in various countries all over the world. Some of the plaintiffs' domain names worldwide are amex-iberia-latinamerica.com, amex-network.com, amex.c....
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....ing 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. Pertinently, this Court vide order dated 15.07.2011 observed that the observations of the ROC dismissing the plaintiffs' challenge to the name of defendant no 1 company were wholly misconceived and in the teeth of the law laid down in Montari Overseas Ltd. Vs. Montari Industries Ltd., 1996 PTC (16) 142. 31. In General Electric Company Vs. Mr. J. Singh & Ors., 2011 II AD (Delhi) 18, the Court observed - "In the case before this Court, the mark of the plaintiff GE (monogram) irrespective of the form in which it is written and the circle in which the letters are enclosed, will be pronounced as GE. The mark used/proposed to be used by the defendant being GE, there is absolute phonetically similarity between the two marks. It can therefore hardly be disputed that the mark GE used/proposed to be used by the defendants is similar to the mark GE (monogram) of the plaintiff. If a person goes to the mark seeking to buy a product of the plaintiff company he woul....