TATA SONS LTD Vs. ARNO PALMEN

JUDGEMENT

(1.) The present suit has been instituted by the plaintiffs against the defendants seeking permanent injunction against the defendants from using the trademark/domain name ww.tatainfotech.in or any other mark/domain name which is identical with or deceptively similar to the plaintiff's trademarks TATA/TATA INFOTECH. The plaintiffs are also praying for an order for transfer of the domain name ww.tatainfotech.in to the plaintiffs from the register of the Registrar, Key-Systems GmBH, and for delivery-up of all infringing materials along with the rendition of accounts of profit illegally earned as well as damages.

(2.) This suit has been filed by Tata Sons Ltd., a company incorporated under the Indian Companies Act, 1913 (plaintiff no.1) and its subsidiary Tata Infotech Ltd., a company incorporated under the Indian Companies Act, 1956 (plaintiff no.2). The plaintiffs have contended that the plaintiff no.1 has been established in the year 1917 and is the principal investment holding company of the Tata Group, which is India's oldest, largest and best-known conglomerate with a turnover of USD 9 Billion. The name TATA is submitted to be have been derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. It is also submitted that the name TATA is being used by the plaintiffs since its inception in the year 1917 and it is claimed that on account of its highly descriptive nature and pioneering activities of the founder, the name TATA has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata group, which is known for high quality of products manufactured and/or services rendered by it under the trademark/name TATA.

(3.) It is also submitted that the House of Tatas comprises over 50 companies which use TATA as a key and essential part of their corporate name. Additionally, it is also contended that there are numerous overseas companies, philanthropic bodies and autonomous public institutions which are promoted by the plaintiff no. 1. And that plaintiff no. 1 is the registered proprietor of the trademarks pertaining to and/or comprising the word TATA in relation to various goods falling across various classes of the Fourth Schedule of the Trade Mark Rules, 2002. By virtue of the said registration, it is contended that plaintiff no. 1 has the exclusive right in the said trademark and is thus entitled to the exclusive use thereof.