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Tata Sons Limited Vs. Ghassan Yacoub and ors. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberCS (OS) No. 1672/1999
Judge
Reported in2004(29)PTC522(Del)
ActsTrade and Merchandise Marks Act, 1958 - Sections 32
AppellantTata Sons Limited
RespondentGhassan Yacoub and ors.
Advocates: Praveen Anand and; Bhagwati Prasad, Advs
Cases ReferredSatyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.
Excerpt:
.....- defendants restrained from operating any business or dealing in any manner using plaintiff's trademark - impugned domain registration in favor of defendants cancelled - domain name transferred to plaintiff. - - 3. the plaintiff has contented that trade mark 'tata' has been upheld in a number of judgments by this court as well as the arbitration and mediation centre at world intellectual property organization. 7. the plaintiff averred that the plaintiffs trade mark right was violated by defendant's registration of the impugned domain name stating that (a) the plaintiff's trade mark tata is well known and famous mark. -1. the defendants, their partners, proprietors, servants, agents, assigns and all other acting on their behalf be restrained from operating any business or..........no. 1 who is said to be owner of the defendant no. 2 the original registrant of the domain name tatagroup.com with the network solution inc.. and defendant no. 4 is the present registrant of the domain name tatagroup.com and the defendant no. 3 is the owner of defendant no. 4. it is averred by the plaintiff that the word tata is a rare patronymic name having all the trappings of an invented word and the name tata has over a period of time acquired reputation of high standard of quality in respect of produces manufactured by the house of tata. 'tata' is a household word in india and is solely and exclusively associated with the house of 'tata'.4. the plaintiff is also the registered proprietor of trade mark 'tata' in relation of various goods and various classes. exhibits 5 and 6.....
Judgment:

Mukul Mudgal, J.

1. The defendants have remained ex-parte in spite of service. Affidavit by way of evidence has been filed. The suit is taken up for final hearing.

2. The plaintiff was established in the year 1917 and is the parent company having large holding in major TATA promoted enterprises which include Tata Iron and Steel Company Limited (TISCO). Tata Engineering and Locomotive Company Limited (TELCO). Tata Chemical Limited. Tata Donnelley Limited, Titan Industries Limited, Tata Infotech Limited, the three Tata Electric companies, Indian Hotels Co. Limited etc. It has been averred that the word 'TATA' has a deep rooted association and identification with the House of 'TATA' which is a reference to the conglomeration of TATA companies which accords recognition across the board and is inseparable from a whole range of activities in which the plaintiff and its associate companies are involved.

3. The suit is directed against defendant No. 1 who is said to be owner of the defendant No. 2 the original registrant of the domain name tatagroup.com with the Network Solution Inc.. and defendant No. 4 is the present registrant of the domain name tatagroup.com and the defendant No. 3 is the owner of defendant No. 4. It is averred by the plaintiff that the word TATA is a rare patronymic name having all the trappings of an invented word and the name TATA has over a period of time acquired reputation of high standard of quality in respect of produces manufactured by the house of TATA. 'TATA' is a household word in India and is solely and exclusively associated with the house of 'TATA'.

4. The plaintiff is also the registered proprietor of trade mark 'TATA' in relation of various goods and various classes. Exhibits 5 and 6 contained the list of trade marks registration held by the plaintiff. The registrations are more than 7 years old and are conclusively valid under Section 32 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The cause of action is said to have arisen when the domain name tatagroup.com was registered in the name of defendant No. 2 of which defendant No. 1 is said to be the sole proprietor. The said domain name was thereafter transferred to defendant No: 4 of which defendant No. 3 said to be the sole proprietor.

5. On 23rd December, 1998, Network Solutions Inc. issued Deactivation Notice to plaintiff, believing it to be the registrant of the impugned domain name. This notice was received by the plaintiff on 11th January, 1999 and on 4th March, 1999 the plaintiff had issued a cease and desist notice to defendant No. 1. The said notice could not be served in spite of several attempts made by the plaintiff. In the meanwhile the plaintiff came to know that the impugned domain name has been transferred to defendant No. 4 with defendant No. 3 as its billing contact. On 30th March, 1999 the plaintiff issued another cease and desist notice to defendant No. 3. The plaintiff has contented that trade mark 'TATA' has been upheld in a number of judgments by this Court as well as the Arbitration and Mediation Centre at World Intellectual Property Organization.

6. A declaration was filed pursuant to the order of this Court dated 3rd August, 1999 and the registrant of the domain name tatagroup.com was said to be the Tata Group located at P.O. Box, 423, Glen Oaks, New York, 11004. The Registrar of Network Solutions tendered to this Court complete control and authority regarding the disposition of the registration of the tatagroup.com domain name. Accordingly this domain name is on 'hold' as per paragraph 5 of declaration made by Network Solutions. This domain name was held as per paragraph 6 and the said declaration till this Court renders a temporary or final decision.

7. The plaintiff averred that the plaintiffs trade mark right was violated by defendant's registration of the impugned domain name stating that

(a) The plaintiff's trade mark TATA is well known and famous mark.

(b) The mark TATA is exclusively associated with the plaintiff.

(c) Members of public and trade are bound to wonder if there is any association/affiliation/endorsement by the plaintiff, to the defendant's activities.

(d) The defendants are trying to pass of themselves as affiliated or associated with the plaintiff.

8. The prayers made by the plaintiff in the plaint can be summarized as follows: -

1. The defendants, their partners, proprietors, servants, agents, assigns and all other acting on their behalf be restrained from operating any business or dealing in any manner, using the plaintiff's well known trademark TATA, or any other trademark comprising of the same or deceptively/confusingly similar to it, with regard to any goods, service or domain names.

2. The impugned domain registration in favor of the defendants be cancelled and the impugned domain name be transferred to the plaintiff.

9. The plaintiff has filed an affidavit of evidence which remained unrebutted. The plaintiff has also relied on the following Exhibits in support of his evidence.

1. Exhibit P-7 - Copy of the deactivation notice sent by registrar of the domain name to the plaintiff regarding the domain name tatagroup.com.

2. Exhibit P-8- Copy of WHOIS Search showing the transfer of domain name to defendant No. 3 with defendant No. 4 as the billing contact.

3. Exhibit P 11- Declaration of the Registrar freezing the domain name tatagroup.com and depositing the title papers of the domain name with Hon'ble Court.

4. Exhibit P 9- Copies of various judgments with respect to domain name matters in favor of the plaintiff.

5. Exhibit P 10- Copies of various judgments and WIPO decisions showing that TATA is a well known mark.

6. Exhibit P 5 & 6- Certified copies of certificates.

7. Exhibit P 3- Copy of newspaper write up showing Gallup poll.

8. Exhibit P 4- Copies of extracts of Encyclopedia Britanmica.

10. The plaintiff has sought additional prayer under Clause 4(i) of Uniform Domain Name Dispute Resolution Policy.

11. The learned counsel for the plaintiff has also relied upon the following judgments:

1. Kaleidoscope (India) P. Ltd. & Anr. v. Phoolan Devi & Ors., 0065/1995 : AIR1995Delhi316

2. Dr. Reddy's Laboratories Ltd. v. Manu Kosuri & Anr., 2001 PTC 859

3. Tata Sons Ltd. v. Manu Kosuri & Anr., 2001 PTC 432

4. Tata Sons Limited v. The Advanced Information Technology Association, Case No. D2000-0049

5. Tata Sons Limited v. D & V Enterprises., Case No. D2000-0479

6. Tata Sons Ltd. v. Ramadasoft, Case No. D2000-1713

7. Tata Sons Ltd. v. Hasmukh Solanki, Case No. D2001-0974.

8. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., 2004 120 SCc 729

The learned counsel for the plaintiff has also relied upon the following extracts:

1. Extracts from Encyclopedia Britannica Micropaedia Volume IX- Ready Reference and Index (15th Edition) at page 837.

2. Extract from Encyclopedia Britannica Micropaedia Volume 9- Knowledge in Depth (15th Edition) at page 41.

12. As the averments in the plaint have been substantiated by documents as well as affidavit of evidence which remained unrebutted, the plaintiff is entitled to succeed. Accordingly the suit is decreed and the defendants, their partners, proprietors, servants, agents, assigns and all other acting on their behalf are restrained from operating any business or dealing in any manner, using the plaintiff's well known trademark TATA, or any other trademark comprising of the same, or deceptively/confusingly similar to it, with regard to any goods, services or domain name. The impugned domain registration in favor of the defendants is cancelled and the domain name is transferred to the plaintiff. Let the decree be drawn up accordingly.


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