Allowed

Tata Digital Private Limited and Anr. v. Jaswanth Nv and Ors.

Delhi HC20 Aug 2024CS(COMM)/206/2023

Case brief

AI extract

What is this about?

In a trademark infringement suit regarding the marks 'TATA NEU' and 'NEU', the Delhi High Court, noting that infringing domain names had already been transferred, directed defendant no. 11 to transfer the remaining domain to the plaintiff and dismissed the suit against defendants 1 to 7, passing a permanent injunction.

What did the court decide?

Decree of permanent injunction passed restraining defendants 1 to 7; Defendant 11 directed to transfer domain tataneu.shop to plaintiff; Suit dismissed against defendant 11 for non-appearance.

Tata Digital Private Limited and Anr. Vs Jaswanth Nv and… — Intellectual Property | Delhi HC (2024)

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$~26

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IN THE HIGH COURT OF DELHI AT NEW DELHI

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- CS(COMM) 206/2023 & I.A. 6652/2023, I.A. 12669/2023

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TATA DIGITAL PRIVATE LIMITED AND ANR. .....Plaintiffs

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Through: Mr. Rohan Krishna Seth, Advocate

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versus

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JASWANTH NV AND ORS. .....Defendants Through: Mr. Mrinal Ojha, Mr. Debarshi Dutta Mr. Arjun Mookerjee and Mr. Rishabh Agarwal, Advocates for D-8 Mob: 9830716022 Mr. Mukul Singh, CGSC with Ms. Ira Singh, Advocate for D-9 Mob: 9971359512 Email: [email protected]

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CORAM: HON'BLE MS. JUSTICE MINI PUSHKARNA

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O R D E R

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% 20.08.2024

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The present suit has been filed for permanent injunction restraining the defendants from using the trademarks ‘TATA NEU’ and/or ‘NEU’ or any other deceptively similar variant thereof, in any manner, amounting to infringement of the plaintiffs’ trademarks as given in the plaint, as follows:

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CS(COMM) 206/2023 Page 1 of 8

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This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/08/2024 at 15:13:58

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CS(COMM) 206/2023 Page 2 of 8

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This is a digitally signed order.

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The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

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The Order is downloaded from the DHC Server on 21/08/2024 at 15:13:58

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Attention of this Court has been drawn to order dated 11^th April, 2023 passed by this Court, wherein, interim directions were passed in favour of

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CS(COMM) 206/2023 Page 3 of 8

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This is a digitally signed order.

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The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

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The Order is downloaded from the DHC Server on 21/08/2024 at 15:13:58

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the plaintiff and against the defendants, in the following terms:

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“xxx xxx xxx

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12. In the circumstances, following interim directions are passed:

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(i) Till the next date of hearing, Defendants 1 to 7 and all others acting on their behalf shall stand restrained from using the trademarks TATA NEU, NEU or any deceptively variant thereof, as would infringe the plaintiffs’ registered trademarks enlisted hereinabove, and from passing off the services as those provided by the plaintiff.

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(ii) Defendant 8 is directed to block access to the domain names registered by Defendant 1 as well as the domain names at Defendant 2 to 7 and to maintain status quo with respect to the said domain names during the pendency of the present proceedings till the next date of hearing.

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(iii) Defendant 8 is also directed, in its response to the present application/written statement filed by way of response to the plaint, to file a separate affidavit disclosing the details of the registrants of the domain names within two weeks.

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(iv) Defendant 9 is directed to issue a notification calling upon the various internet and telecom services providers registered under it to block access to the domain names reflected on the website of Defendant 1 as well as the domain names impleaded as Defendants 2 to 7.

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xxx xxx xxx”

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Attention of this Court has also been drawn to the order dated 17^th August, 2023, wherein, the domain names, which amounted to infringement of the plaintiffs’ trademarks, were directed to be transferred to the plaintiffs. Relevant paras of order dated 17^th August, 2023, are reproduced as below:

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“xxx xxx xxx

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7. This matter was also to be taken up today for consideration of the prayer of Defendant 8 for a direction to the plaintiff to bear the costs of successive renewals of continued registration of the infringing domains registered with Defendant 8, as enlisted in paras 20 to 22 of the plaint. Mr. Kevlani submits that, if the renewal costs are not paid, the domain names would, on the expiry of the term of the license, be available in the public domain for anyone else to purchase. In that

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CS(COMM) 206/2023 Page 4 of 8

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event, Defendant 8 could not continue to hold on to the lock presently placed on the said domain name unless the cost of renewal is born by Defendant 8 itself.

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8. Mr. Prithvi Singh suggests a via media. He submits that, if the allegedly infringing domain names are transferred to the plaintiff, the plaintiff is willing to bear the costs of their successive renewals. Mr. Kevlani also submits that this can function as an interim arrangement, which would solve the present imbroglio. In view thereof, Defendant 8 is directed to transfer the https://tataneu.shop domain name to the plaintiff. The plaintiff would, subject to the outcome of the present proceedings, bear the costs of successive renewals of the said domain names. Para 3 of the order dated 31 July 2023, as already modified vide order dated 2 August 2023, shall further stand modified to the aforesaid extent.

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xxx xxx xxx”

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(Emphasis Supplied)

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The aforesaid order dated 17th August, 2023 was subsequently modified vide order dated 29^th August, 2023, in the following manner:

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“xxx xxx xxx

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2. Learned Counsel for the parties are ad idem that the para 8 is required to read thus:

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“8. Mr. Prithvi Singh suggests a via media. He submits that, if the allegedly infringing domain names are transferred to the plaintiff, the plaintiff is willing to bear the costs of their successive renewals. Mr. Kevlani also submits that this can function as an interim arrangement, which would solve the present imbroglio. In view thereof, Defendant 8 is directed to transfer the domain names

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www.tataneu.space, www.neutata.com, www.tataneu.biz, www.tataneu.cloud, www.tataneu.co, www.tataneu.digital, www.tataneu.fun, www.tataneu.info, www.tataneu.life, www.tataneu.live, www.tataneu.me, www.tataneu.store, www.tataneu.world, www.tataniu.com, www.tataneu.work, www.tataneu.site, www.tataneu.pro, www.tataneu.online, www.tataneu.mobi and www.tataneu.asia to the representative of the plaintiff whose name would be provided by learned Counsel for the plaintiff. The plaintiff would, subject to the outcome of the present proceedings, bear the costs of successive renewals of the said domain names. Para 3 of the order dated 31 July 2023, as already modified vide order dated 2 August 2023, shall further stand modified to the aforesaid extent.”

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xxx xxx xxx”

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(Emphasis Supplied)

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CS(COMM) 206/2023 Page 5 of 8

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When the matter was listed on the last date of hearing, it was noted that formal summons had never been issued to defendant no. 11, though an application being I.A. 15397/2023 under Order I Rule 10 of the Code of Civil Procedure, 1908 (“CPC”) was allowed and proposed defendant no. 11, i.e., HOSTINGER Operations, UAB, was impleaded as a party.

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Accordingly, this Court had issued summons to defendant no. 11 on 2^nd August, 2024.

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Pursuant thereto, summons were issued to defendant no. 11. Plaintiff has filed affidavit of service, relevant portions of which, read as under:

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“xxx xxx xxx

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3. I state that the summons issued by the Hon’ble Court, along with the complete suit paper book, injunction, and impleadment orders, were sent to Defendant No. 11 at their email addresses on 07 August, 2024, at 3:20 PM from my email ID, [email protected]. The email did not bounce back and Hostinger sent us a reply confirming suspension of the infringing domain www.tataneu.shop. Details pertaining to the service are below and proof of the same is attached as Document A.

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”

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xxx xxx xxx”

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Perusal of the aforesaid clearly shows that defendant no. 11 stands served.

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None appears for defendant no. 11, despite service.

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The domain name owned by defendant no. 11 is https://tataneu.shop.

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This Court notes that there is already a direction in favour of the plaintiff with respect to transferring all the domain names which infringed the plaintiffs’ trademark ‘TATA NEU’ and/or ‘NEU’.

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Accordingly, considering the submissions made before this Court and

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CS(COMM) 206/2023 Page 6 of 8

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considering the previous orders passed in favour of the plaintiffs, the defendant no. 11 is directed to transfer the domain name https://tataneu.shop, in favour of the plaintiff forthwith.

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At this stage, learned counsel appearing for the plaintiffs submits that defendant no. 8, i.e., GoDaddy India Web Services Private Limited, has already transferred all the infringing domain names in favour of the plaintiff. 14. Learned counsel appearing for the plaintiff further submits that the right to file written statement of defendant no. 1, i.e., Jaswanth NV, was closed and no defense has been put forth on behalf of defendant no. 1. 15. He, thus, submits that there is no impediment in decreeing the suit against defendant no. 1 also. 16. This Court notes that the domain names that were owned by defendant no. 1 have already been transferred in favour of the plaintiffs. 17. None appears for the defendant no. 1. No written statement has been filed on behalf of defendant nos. 1 to 7 and their right to file written statement, already stands closed.

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This Court notes that domain names owned by defendant no. 1 had been directed to be transferred in favour of the plaintiff vide order dated 17^th August, 2023, as modified vide order dated 29^th August, 2023. 19. Learned counsel appearing for defendant no. 8 submits that transfer of domain names owned by defendant no. 1 was duly effected in favour of the plaintiffs by the defendant no. 8 and confirmation to this effect was sent by th defendant no. 8 to the plaintiff on 19 September, 2023. 20. Accordingly, the position that emerges is that the defendant no.8 has already transferred the domain names owned by defendant no.1, to the plaintiff. Thus, no claim survives against defendant no.8.

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Defendant no.9 is a proforma party, i.e., Department of Tele

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CS(COMM) 206/2023 Page 7 of 8

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Communication, while defendant no.10 is John Doe, i.e., unknown persons. 22. Considering the facts and circumstances of the present case, this Court is of the view that the suit can be decreed in favour of the plaintiff. No purpose would be served in sending the matter for trial, and there is no likelihood or real prospect of the defendants, succeeding on the claim. Further, there is nothing on record to show that there is any genuine dispute as to any material fact.

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Accordingly, a decree of permanent injunction is passed restraining defendant nos. 1 to 7, their owners, proprietors, employees, partners, representatives and/or acting for and on their behalf, from using the trademarks ‘TATA NEU’ and/or ‘NEU’ or any deceptively similar variant thereof, in any manner amounting to infringement/passing off.

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Decree sheet be drawn accordingly in terms of Para 34 (a) and (b), of the plaint.

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The present suit is accordingly disposed of, along with the pending applications.

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MINI PUSHKARNA, J

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AUGUST 20, 2024 ak

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CS(COMM) 206/2023 Page 8 of 8

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Tata Digital Private Limited and Anr. v. Jaswanth Nv and Ors.

Case brief

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Tata Digital Private Limited and Anr. v. Jaswanth Nv and Ors.

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