Disposed

Tata Sons Private Limited v. Deepak Kumar & Anr.

Delhi HC2 May 2024CS(COMM)/37/2023

Case brief

AI extract

What is this about?

Trademark infringement suit over unauthorised use of the TATA mark and domain name www.tata-healthcare.com. Defendants complied with an earlier injunction, consented to transfer of the domain name, and accepted a decree with damages waived due to their financial circumstances.

What did the court decide?

Permanent injunction decree per prayers 58(i)-(v); transfer of domain www.tata-healthcare.com to plaintiff; full court fee refund; no damages awarded.

Tata Sons Private Limited Vs Deepak Kumar & Anr. — Intellectual Property | Delhi HC (2024)

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$~22

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* IN THE HIGH COURT OF DELHI AT NEW DELHI

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- CS(COMM) 37/2023

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TATA SONS PRIVATE LIMITED ..... Plaintiff

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Through: Mr. Achuthan Sreekumar, Mr. Rohil Bansal and Ms. Swastik Bisarya, Advocates.

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versus

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DEEPAK KUMAR & ANR. ..... Defendants Through: Mr. Shivam Singh Advocate with Mr. Deepak Kumar in Person.

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CORAM: HON'BLE MR. JUSTICE SANJEEV NARULA

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O R D E R % 02.05.2024

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Plaintiff, the holding company of Tata Group of Companies, is the registered proprietor of trademark “TATA”¹ and several other formative marks. Plaintiff has filed the present suit on account of unauthorised use of its trademark by Defendants, as part of their impugned logo and the domain name “www.tata-healthcare.com”. The unauthorised use of the Plaintiff’s trademark was also displayed on various social media platforms.

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On 20^th January, 2023, upon recognizing a prima facie case of infringement of Plaintiff’s trademark, the Court issued an injunction restraining the Defendants from utilizing the Plaintiff’s trademark or any deceptively similar mark. Additionally, a Local Commissioner was

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1 “Plaintiff’s trademark”

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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 14/05/2024 at 19:59:54

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appointed to inspect and report on the alleged infringement at the Defendant’s premises. In compliance, the Local Commissioner, has furnished a report confirming unauthorized use of the Plaintiff’s trademark on the Defendant’s premises.

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Mr. Deepak Kumar, Defendant No. 1, in person, and Mr. Shivam Singh, Advocate confirm compliance with the injunction by removing all online and offline content that infringed the Plaintiff’s trademark. The Defendants consent to transfer the domain name “www.tata-healthcare.com” to the Plaintiff and commit to abstain from using the Plaintiff’s trademark or any deceptively similar marks, in any form. They also express a willingness to accept an injunction decree, conditional upon the Plaintiff waiving claims for damages and costs.

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Regarding the claim for damages, Mr. Deepak Kumar has presented photographs illustrating his impoverished living conditions, asserting that his financial situation as part of a very poor family precludes the possibility of paying the damages demanded by the Plaintiff.

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Mr. Achuthan Sreekumar, representing the Plaintiff, detailed the Defendants’ infringing activities. However, he graciously submitted that, given the particular facts and circumstances of this case, the Plaintiff defers to the Court’s discretion regarding the award of damages.

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The Defendants have not filed any written statement to defend their alleged action. Nonetheless, in view of the express statement made by Mr. Deepak Kumar and his counsel, the suit is decreed in favour of the Plaintiff and against the Defendants in terms of the prayers, as delineated in Paragraph No. 58(i) to (v) of the plaint.

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Furthermore, since the Defendants have no objection to transfer the

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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. The Order is downloaded from the DHC Server on 14/05/2024 at 19:59:54

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domain name “www.tata-healthcare.com”, to the Plaintiff, it is directed that the Plaintiff shall be free to approach the concerned Registrar for transfer of said domain name, on completion of the necessary formalities.

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In assessing the question of damages, the Court must observe that Defendants’ use of the Plaintiff’s trademark “TATA”, which has been declared as a ‘well-known’ mark cannot be deemed innocent or honest. The Defendants’ decision to establish an online presence using the infringing trademark clearly suggests an attempt to capitalize on the Plaintiff’s goodwill and reputation. Nevertheless, the Defendants have acknowledged the infringement and chosen not to contest the lawsuit, consenting instead, to a decree of permanent injunction. The Plaintiff has entrusted the question of damages to the Court’s discretion, allowing for an equitable evaluation. Thus, given the Defendant’s dire financial circumstances and their expressions of regret, the Court opts for a lenient approach. However, this leniency is conditional; the Court emphasizes that any future infringement will result in aggravated damages.

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Since there is an element of settlement between the parties, resulting in resolution of the present lawsuit, Mr. Sreekumar’s request for refund of court fees is accepted. Accordingly, the Registry is directed to refund full court fees, to the Plaintiff.

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The suit is decreed in the above terms.

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Decree sheet be drawn up.

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SANJEEV NARULA, J

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MAY 2, 2024/ nk

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Tata Sons Private Limited v. Deepak Kumar & Anr.

Case brief

What is this about?

What did the court decide?

Tata Sons Private Limited v. Deepak Kumar & Anr.

Case brief

What is this about?

What did the court decide?

What the court decided

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Issues for consideration

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