TATA SONS LIMITED Vs. SHAMIM

JUDGEMENT

(1.) THE plaintiff has filed the present suit for permanent injunction restraining passing off, damages, rendition of accounts, delivery up, etc.

(2.) THE plaintiff, established in the year 1917 as a body corporate, is the principal investment holding company of the TATA Group, which is Indias oldest, largest and best-known conglomerate, with a turnover of over Rs. 251,543 Crores (US $ 62.5 billion) for the financial year 2007-08. Since its inception in 1917, the plaintiff has been continuously and consistently using the trademark and trade name TATA, which is a rare patronymic name possessing the distinctiveness of an invented word, for its own business activities and those of the companies promoted by it. The use of the trademark and trade name TATA by the plaintiffs predecessors in business dates back to 1868. The name TATA has consistently been associated with, and exclusively denotes the conglomeration of the companies forming the TATA Group, colloquially also referred to as the "House of TATA". The House of TATA consists of over 100 companies of which over 50 companies use TATA as a key and essential part of their corporate name.

(3.) THE defendant Nos.1 and 2 in the suit are stated to be engaged in the business of manufacture, distribution, supply and sale of shuttle cocks. The defendant No.2, M/s. Meerut Shuttle Cocks Industries, is located at Suraj Kund Road, Meerut, Uttar Pradesh. The defendant No.1 is the proprietor of the defendant No.2 concern. In or around the month of April, 2008, the plaintiff received information that the defendants were manufacturing and selling shuttle cocks under the impugned name TATA. The plaintiff accordingly authorised an investigation of the defendants through a professional investigation agency. In April, 2008 itself, the plaintiff received the investigation report which confirmed the involvement of the defendants in infringing activities. The original report of the investigator dated 9 th April, 2008 is filed in the present proceedings. Thereafter, a fresh investigation of the defendants was also carried out. The investigation report of the second investigator dated 19th May, 2009 is also filed in the present proceedings. The investigation conducted by the plaintiff revealed that the defendants have registered the impugned trademark TATA vide application No.260676 in Class 28. The said registration of the defendants, however, appears to have become invalid due to non-renewal of the trademark registration. The plaintiff claims that the adoption and use of the trademark TATA deceptively similar to the plaintiffs well-known trademark TATA is a blatantly dishonest and mala fide attempt by the defendants to derive unfair advantage by creating an illusion that its products emanate from the plaintiff or have some nexus or association with the plaintiff. The plaintiff asserts that having regard to the fact that the trademark TATA of the plaintiff is a well-known mark enjoying an expansive reputation and goodwill, and that the TATA companies are engaged in a wide spectrum of activities using the trademark TATA and the said trademark has come to be exclusively recognized as a source indicator of the goods and business of the plaintiff, the use of an identical trademark by the defendants will create confusion and deception in the minds of the purchasing public and members of the trade, who will be misled into purchasing the defendants products. The defendants will thus be unjustly enriched at the consumers expense and at the expense of the plaintiff. The damage that has already been inflicted on the plaintiffs business goodwill and reputation is stated to be incalculable. However, for the purposes of the present suit, the plaintiff estimates that such losses may be to the tune of at least Rs. 20 Lacs till the date of the institution of the suit.