Allowed

Tata Sons Ltd. v. Neil Sombuntham & Anr.

Delhi HC3 Mar 2015CS(OS)/3476/2012

Case brief

AI extract

What is this about?

The Plaintiff sought a permanent injunction and transfer of an impugned domain name containing the well-known trademark 'TATA'. The Court found the Defendants had malafide copied the trademark via the domain 'www.tatamassage.com' and passed off services as originating from the Plaintiff.

What did the court decide?

Decree of permanent injunction granted; Defendants restrained from using trademark 'TATA' or domain 'www.tatamassage.com'; Defendant No.2 ordered to erase or transfer domain name.

Tata Sons Ltd. Vs Neil Sombuntham & Anr. — Intellectual Property | Delhi HC (2015)

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$~17

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IN THE HIGH COURT OF DELHI AT NEW DELHI

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- CS(OS) 3476/2012

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Date of Decision:March 3, 2015

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TATA SONS LTD ..... Plaintiff

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Through Pravin Anand, Achuthan Sreekumar and Karan Kamra Advs

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versus

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NEIL SOMBUNTHAM & ANR ..... Defendant Through None

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CORAM: HON'BLE MR. JUSTICE JAYANT NATH

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CS(OS) 3476/2013

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JAYANT NATH, J. (ORAL)

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The Defendants were ex-parte and ex-parte evidence of plaintiff was recorded vide order dated 25.04.2014. Arguments have been heard in this suit.

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The plaintiff has filed the present suit seeking a decree of permanent injunction against the defendant for infringement of the registered Trade Mark of the plaintiff „TATA‟ and for claiming rights in their registered Trade Mark.

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It is the contention of the plaintiff that it was established in the year 1917 as a body corporate and the promoter and principal investment holding company of the House of TATA. The plaintiff and other Tata companies are India‟s oldest and largest private-sector employer including Tata Steel, Tata Motors, Tata Power, Tata Chemicals, etc. The enterprises promoted by the plaintiff have laid the foundation in the industrial core

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CS(OS) 3476/2012 Page 1 of 4

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sectors, pioneering textiles, iron & steel, power, chemicals, hotels, and automobile industries in India. In 2009, the plaintiff was ranked as the world‟s 11^th most reputed company according to a study complied by a United States based Reputation Institute. The average turnover of the House of TATA is assessed at USD 100 billion (around Rs.4,757.21 billion)

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It is contended by the plaintiff that the said trademark „TATA‟ was commercially launched in India by the plaintiff in the year 1917. It is further contended that since then the said trademark in respect of the aforesaid goods has been used continuously by the plaintiff in India over a long period and thus has become distinctive. The plaintiff also states that the trademark „TATA‟ has enjoyed an unparalleled reputation and goodwill as the said trademark in the aforesaid goods has been continuously and extensively used and has acquired the status of a „well-known‟ trademark. 5. It is stated that the trademark „TATA‟ is registered in India in class 44 under registration no. 1994176. The details of the trademark registrations of the plaintiff are provided in para 14 of the plaint. 6. It is also stated that the plaintiff has filed a number of cases in this Court and the WIPO Arbitration and Mediation Centre against the misuse of its trademark in relation to domain names. 7. It is contended by the plaintiff that the defendant no.1 was running a spa in San Francisco, United States of America and is the Registrant of the impugned domain name “www.tatamassage.com”. The impugned domain name was registered by the defendant on 4th October, 2011. The plaintiff also states that the Defendant no1 has misappropriated the well know trademark „TATA‟ of the plaintiff as a part of its domain name which is fully functional with dishonest intentions to capitalize the goodwill and reputation for the said well established trade name of the plaintiff in global market. The plaintiff also states that the word „TATA‟ is a „well-known‟

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CS(OS) 3476/2012 Page 2 of 4

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trademark of the plaintiff and it is the statutory and common right of the plaintiff to protect the said trademark from being infringed either by adoption of the same as a trademark or by the use of the same as a domain name.

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The plaintiff contends that it has also established its name in the field of hospitality industry i.e. Indian Hotels Company Ltd. (HCL) and its subsidiaries, collectively known as Taj Hotels, Resorts and Palaces which is also one of Asia‟s largest and finest groups of hotels. It is contended by the plaintiff that plaintiff‟s sister concern around the world are under the name JIVA. All JIVA Spas categorically state that they are a „TATA Enterprise‟ and provide international spa services of international standards. The Plaintiff and its group companies have various online internet portals in the fields of entertainment, media, shares, shopping etc widely by customers worldwide.

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The defendant is stated to be the registrant of the impugned domain name www.tatamassage.com. Defendant No.2 is a proforma defendant and the relief sought against said defendant No.2 is to effectuate transfer of the impugned domain name in favour of the plaintiff. The said domain name was registered by defendant No.1 on 4.10.2011. It is urged that the domain name used by the defendant includes the words TATA which is identical as a whole to the well known trademark and service mark TATA.

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That during late October-early November, 2012, the plaintiff came to know that the defendants are the Registrant of the impugned domain name “www.tatamassage.com”. Moreover defendant no.1 has uploaded photographs of several Hindu Gods and Goddess on their impugned website “www.tatamassage.com” in order to show nexus with India and the Plaintiff‟s trademark. The plaintiff has been prejudiced by the said infringement.

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CS(OS) 3476/2012 Page 3 of 4

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The plaintiff has filed evidence by way of affidavit of Mr.V.Gurumoorthi. He has exhibited 24 documents as Ex.PW1/1 to Ex.PW1/24. Another affidavit of Mr.Panda has also been filed reiterating the submissions made in the plaint. 12. In view of the averments made in the plaint and the documents placed on record the plaintiff has established that the said trademark „TATA‟ is exclusively associated to the plaintiff and its products/services. The trademark „TATA‟ is registered in their favour in class 44 in India. The copyrights are also duly registered in favour of the plaintiff. It is further established that the defendants have malafidely copied the well known trademark as that of the plaintiff with all its features in relation to their impugned domain name “www.tatamassage.com” which they are trying to pass-off as originating from the plaintiff.

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In view of the above a decree of permanent injunction is passed in favour of the plaintiff and against the defendants restraining the defendant and also their agents, representatives, distributors, etc from manufacturing, selling, using, displaying, advertising directly/ indirectly dealing in the business of spa massage parlour under the trade name, TATA MASSAGE or the domain name “www.tatamassage.com” and/or using any trademark/name/description/device bearing the trademark „TATA‟. Defendant No.2 shall erase the said domain name, namely, www.tatamassage.com or transfer it to the name of the plaintiff. 14. No orders as to cost. Suit is disposed off.

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JAYANT NATH, J.

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MARCH 03, 2015

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CS(OS) 3476/2012 Page 4 of 4

Tata Sons Ltd. v. Neil Sombuntham & Anr.

Case brief

What is this about?

What did the court decide?

Tata Sons Ltd. v. Neil Sombuntham & Anr.

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

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