TaxTMI 
TaxTMI 
2011 (3) TMI 1752
X X X X Extracts X X X X
X X X X Extracts X X X X
....under, the name TATA has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata Group, which is known for high quality of products manufactured and/or services rendered by it under the trade mark/name TATA. The House of Tatas comprises of over 100 companies of which over 50 companies use TATA as a key and essential part of their corporate name. It is claimed that being proprietor of the trade mark TATA, the Plaintiff company enjoys exclusive rights in the aforesaid mark. The Plaintiff company claims to be owner of various trademarks which contain the name TATA as a part of the registered trademark. It is alleged that on account of continuance and extensive use of the Plaintiff's trade mark TATA over a long period of time spanning a wide geographical area, coupled with vast promotion and publicity, the said trademark enjoys an unparalleled reputation and goodwill and has acquired the status of a "well known" trademark. 2. The Defendants in Suit No. 264/2008 Mr. Manoj Dodia and Mr. Manish Dodia are stated to be co-owners of M/s. Durga Scale Co., which is engaged in the business of manufacturing and selling weighting scales an....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... Defendants in both the suits are ex parte. In Suit No. 264/2008 the Plaintiff has filed the affidavit of Mr. V. Gurumoorthi, Constituted Attorney of Plaintiff No. 1, by way of evidence. In his affidavit Mr. Gurumoorthi has stated that Plaintiff Tata group had a turnover of Rs. 2,51,543/- Crores for the year 2007-08 and is one of the most trusted business houses in the Country. He has claimed that the name/trademark TATA is a household name, synonymous with excellence in almost every field of business activity and the enterprises promoted by Tata operate in various core sectors, including iron and steel, textile power, chemicals, hotel, automobile, computer, telecommunications, financial services and mutual funds, etc. and the use of trademark and the name TATA by predecessors of the Plaintiff dates back to 1868. According to him, house of Tatas consists of over 100 companies of which more than 50 companies use TATA as a key and essential part of their corporate names. He claims that the Plaintiffs are proprietors of the trademark TATA on account of priority in adoption, long, continuous and extensive use and advertising and the reputation accruing thereto in the course of trade....
X X X X Extracts X X X X
X X X X Extracts X X X X
....lize on the attraction and reputation which it enjoys amongst the consumers. When a person uses another person's well known trademark, he tries to take advantage of the goodwill that well known trademark enjoys and such an act constitutes an unfair competition. 8. The concept of confusion in the mind of consumer is critical in actions for trademark infringement and passing off, as well as in determining the registrability of the trademark but, not all use of identical/similar mark result in consumer confusion and, therefore, the traditionally principles of likelihood of confusion has been found to be inadequate to protect famous and well known marks. The world is steadily moving towards stronger recognition and protection of well known marks. By doing away with the requirement of showing likelihood of confusion to the consumer, by implementing anti-dilution laws and recognizing trans-border or spill over reputation wherever the use of a mark likely to be detrimental to the distinctive character or reputation of an earlier well known mark. Dilution of a well known trademark occurs when a well known trademark loses its ability to be uniquely and distinctively identify and dist....
X X X X Extracts X X X X
X X X X Extracts X X X X
....rs shall take account of the knowledge of the trademark in relevant sectors of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark. Thus, the TRIPS Agreement, 1994 brought about a material change by prohibiting use which constitutes a representation or imitation and is likely to create confusion even if such use is in relation to altogether different goods or services, so long as the mark alleged to have been infringed by such use is a well known mark. This Article, thus, grants protection against dilution of a trademark, which may be detrimental to the reputation that the business carried under a well known trademark enjoys. 10. Well known marks and trans-border reputation of brands was recognized by Courts in India, even before Trade Marks Act, 1999 came into force. In , the manufacturers of Mercedes Benz sought an injunction against the Defendants who were using the famous "three pointed star in the circle" and the word "Benz". The Court granted injunction against the Defendants who were using these marks for selling apparel. Similarly, in Whirlpool Co. and Anr. v. N.R. Dongre (1996) PTC 415 (Del.) the ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ark including - (i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark; (ii) the duration, extent and geographical area of any use of that trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; (iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. Sub-section (7) of Section 11 of....
X X X X Extracts X X X X
X X X X Extracts X X X X
....r categories of goods or services. He may also prevent others from incorporating the well known trademark as a part of their corporate name/business name. Even if a well known trademark is not registered in India, its owner may avail these rights in respect of the trademark registered/used or sought to be registered/used in India, provided that the well known mark is otherwise known to or recognized by the relevant section of public in India. The existence of actual confusion or a risk of confusion is, however, necessary for the protection of a well known trademark, as a result of infringement. 13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mar....
X X X X Extracts X X X X
X X X X Extracts X X X X
....85725, 752454, 1590660, 1033578, 1033581, 1033584, 1033590, 1033593, 1033596, 1033602, 1033605, 6090, 92646, 839737, 92652, 92652, 92648, 92653, 585066, 839739, 585383, 839743, 92652, 585728, 1033577, 1033580, 1033592, 1033595, 1033601, 1033604, 1033607, 907791, 92653, 569862, 585734, 1236890, 1236891, 1236892, 1236893, 1615092, 1615094, 1236894, 1236895, 1236896 and 1236897. The Plaintiff company claims to be having agreements called TATA Brand Equity and Business Promotion Agreements with a large number of group companies whereby a particular code of conduct needs to be followed by those companies in all their dealings. TATA group of companies includes a number of large companies such as TISCO, Tata Motors Ltd., Tata Metaliks Limited, Tata Cummins Ltd., Tata Tea Limited, Tata Housing Development Company Ltd., Tata Finance Limited, Tata AIG Risk Management Services Ltd., Tata Consultancy Services (TCS), Tata Teleservices, Tata Honeywell Limited and Tata Infotech Limited. 16. In CS(OS) No. 1922/2003 decided on 14th September, 2004, this Court observed that the trademark TATA has become a household name not only in India but throughout the world and, therefore, is well known a....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... a well known mark, (e) there is no evidence of any other person holding registration of or using the trademark TATA and (f) the reputation which companies of TATA group enjoys not only in India but also in many other countries, it is difficult to dispute that the trademark TATA is a famous and well known brand in India. I, therefore, have no hesitation in holding that the mark TATA whether word mark or device or when use in conjunction with some other words is a well known trademark within the meaning of Section 2(z)(b) of the Trademarks Act, 1999. The use of the trademark TATA in relation to any goods or services is, therefore, likely to be taken as a connection between house of TAT As and the goods or services, which are sold under this trademark or a trademark which is similar to it. 18. Section 29(1) of the Trademarks Act, 1999, to the extent it is relevant, provides that a registered trademark is infringed by a person, who is neither registered proprietor of the trademark nor has his permission to use the mark but still decides to use that mark or a mark which is identical or deceptively similar to the registered trademark in relation to goods or services in respect of whi....
X X X X Extracts X X X X
X X X X Extracts X X X X
....a use is likely to cause confusion in the mind of the consumers, as to the source of the product offered to them and also give an impression that the mark being used by the Defendants was in some manner or the other associated with the registered trademark of the Plaintiff company and, therefore, amounts to infringement within the meaning of Section 29(1) and 29(2) of the Trademarks Act, 1999. Use of the mark TATA even in conjunction with the word A-ONE on the products of the Defendant is likely to give an impression to the customer that the product has been manufactured or is being sold in association with a company of TATA group and an unwary customer is likely to purchase the product of the Defendants only on account of use of the mark TATA on it, in the belief that the product was in some manner or the other connected with the house of Tatas. An unwary consumer while purchasing the goods of the Defendants is likely to attach considerable importance to use of the mark TATA on the product and on account of connection of the trademark TATA with the house of Tatas, he may believe that the product was likely to be of superior quality and high standard which he expects in respect of ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....card mentioned his trade name as "M/s New Sangam Motors" though T in a circle (device) was found printed in a card. The cash memo/bill book of Defendant was also found bearing device T in a circle. A perusal of the invoice and business card confirms the report of the Local Commissioner and shows that the stylized T in a circle (device) was found printed on the invoice of Sangam Motor. The invoice further shows that Sangam Motor deals in TATA SUMO, INDICA, MARSHAL, BOLERO, SCORPIO, Suspension and Engine Parts and Genuine and Spare Parts for TELCO. The business card of Sangam Motor also bears the same device. 22. Section 29 of Trade Marks Act, 1999, to the extent it is relevant, provides that a registered trademark is infringed when either that mark or a mark which is identical or deceptively similar to that mark is used in the course of a trade, in relation to goods or services. Section 2(2) of the Act provides that in reference to the use of a mark "in relation to goods" shall be construed as a reference to the use of the mark upon or in any physical or in any other relation whatsoever to such goods. When a trade mark is used on an invoice issued for selling the goods, it does i....
X X X X Extracts X X X X
X X X X Extracts X X X X
....s 37 in respect of construction and repair of power stations, power generating apparatus and of machinery, installation of electrical and generating machinery, information services relating to repair or to installations, providing on-line from a computer database or the Internet, building construction, repair and installation Services. Since the Defendant is not a distributor/agent of any company belonging to Tata Group nor has he been permitted to use the aforesaid trade mark owned by the Plaintiff company, use of that mark by him on his invoice would constitute infringement of the trademark. 23. As per fourth schedule of Trade Marks Act, 1999, parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute articles included in other classes. Since there is no specific classification of auto parts, registration of the aforesaid device in respect of vehicles would also include registration in respect of parts of vehicle. Therefore, this registered trade mark of the Plaintiff covers auto parts as well. Since the Defendant is dealing in auto parts and the registered trade mark of the Plaintiff has been printed o....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... the trade mark TATA of the Plaintiff company. 27. The promotion and building of a Trade Mark, particularly a mark which is used in relation to a variety of good and/or services, requires considerable efforts, skill and expenses. The brands are not built in a day, it takes years to establish a brand in the market. Moreover, brand equity can be earned only if the quality of the product sold and/or services provided under that name are consistently found to be of superior quality. No amount of marketing efforts and promotional expenditure can build a brand, particularly in the long run, if the quality of the product/service does not commensurate with the marketing efforts. The brands, particularly well known brands, themselves are now becoming highly valuable and in fact are being sold as standalone products. The companies which invest heavily in brand building and back them up by quality products are bound to suffer not only in reputation but also in financial terms, on account of diminution in the value of the brand as well as sale of their products/services, if the brands are not given adequate protection by the Courts, by awarding punitive damages against the infringers. Also,....