INDIACOM LIMITED Vs. TATA TELESERVICES LTD

JUDGEMENT

(1.) THE present notice of motion is initiated by the plaintiff on a passing off action under the provisions of the Indian Mercantile Marks Act, 1999 seeking direction that the defendants should be restrained by an order and injunction from in any manner using the mark in relation to its telecom related services and the products name and/or mark "indicom" or any other name or mark deceptively similar to the Plaintiff's corporate name and trade mark "indiacom". The aforesaid injunction is sought in a passing off action as it is contended by the plaintiff that the defendants are seeking to pass off the business services and product of the plaintiff as if the same is the business and product of the defendants. Some of the material facts in the present case briefly enumerated are as under :-

(2.) THE originally the name of the plaintiff company was known as Sesa Seat Information Systems pvt. Ltd. and it was incorporated in 1988. The company was engaged in the technical collaboration with a foreign company known as STET S. p. a. of italy. In 1988 the plaintiff entered into the business of directory publication. From the said year the plaintiff also published what is popularly known as "yellow Pages" and Stand Alone Yellow Page directories. The business of the telecommunication was wholly monopolised in India with the Government of India Undertaking of Mahanagar Telephone Nigam limited and thus the plaintiff was publishing the directories in respect of the telephones of the said mahanagar Telephone Nigam Limited. Thus, telephone directories were printed and published on behalf of the said Telephone Nigam Limited of different cities and areas. The said telephone directories were distributed by the said Mahanagar Telephone Nigams limited free of cost to every subscriber of the telephone connection. Thus, the plaintiff was publishing the said telephone directories on behalf of the Mahanagar Telephone Nigams Limited and distributing the same amongst the public free of charge through the Mahanagar Telephone Nigam Ltd. The main source of the revenue generation of the plaintiff has been from procuring the advertisement from various parties and printing the same in the telephone directories. It is the case of the plaintiff that the income generated from the advertisement revenue during the period 1. 9. 1988 to 30. 9. 1999 i. e. for a period of almost 10 years and six months has been in the range of Rs. 43,11,095 to Rs. 14,63,60,292/- It is the further case of the plaintiff that in respect of the advertisement and promotional expenses to promote the name of the plaintiff as a corporate name namely, INDIACOM limited as well as the trade mark INDIACOM the plaintiff has spent towards the promotional and advertisement expenses from 21. 1. 1988 to 30. 9. 1999 from Rs. 10,19,186/- to Rs. 43,89,141/ -. It is the further case of the plaintiff that the plaintiff unsuccessfully also attempted to enter into the local network management services and/or to apply for the licence for telecommunication services but they have been unsuccessful.

(3.) IT is the case of the plaintiff that in 1998, the Government of India announced the revised policy of a telecom sector known as National Telecom policy 1998. It is the case of the plaintiff that a company known as ICPL claimed to have commenced the use of the word "indicom". This company known as india Communication Private Limited has been incorporated sometime on 24. 1. 2000. With effect from 1. 4. 2000 the business of the said India communication Private Limited was taken over by a proprietary firm known as M/s. Indicom. The said m/s. Indicom applied for registration of trade mark on 20. 7. 1999 under Registration Application No. 866988. By the said application the applicants have contended that they are seeking to register mark "indicom" under Class 16. In the said application it was the claim that the mark is in use from 1. 5. 1996. However, subsequently by a covering letter dated 7. 2. 2003 the defendants have corrected that application and has claimed user of the mark with effect from 1. 5. 1999. On 26. 8. 1999, the plaintiff hosted website under the domain name of indiareference. COM. It is the case of the plaintiff that on the other hand the business of the plaintiff of publishing directories for various cities and towns has been commenced since September, 1999. On 6. 9. 1999, the plaintiff decided to change their corporate name from Sesa Seat to Indiacom directoires Limited. With effect from 6. 9. 1999 once again the plaintiff continued to publish directories, yellow pages and Stand Alone Yellow pages. It is the further case of the plaintiff that they have been issuing the said directories in 24 cities and/or towns and 71 lakh copies are being distributed. The plaintiff was also claiming that they have also published under the brand name "indiacom" tourist guides, business directories, directory of e-mail pages, and other business information. During the period 2000 to October, 2002 on the other hand the said company known as indicom Communications Private Limited also continued the business of web hosting, internet and designing and/or maintenance thereof. It is the case of the plaintiff that defendant erstwhile in title of the brand name "indicom" was only in web hosting business and publication in respect thereof. They had no business or earned any good-will in respect of the mark "indiacom" in relation to telecommunication services.