JUDGEMENT
MANMOHAN SINGH,J. -
(1.)Intellectual Property Rights- Trade marks - Infringement of - plaintiff, proprietor of the trade mark ''TATA '' commissioned the creation of an artistic work comprising of a logo entitled ''TATA World '' to be used on its website of the same name - On coming to the knowledge of the infringement of their trade mark TATA by Defendant No. 1 who was openly selling steel cutlery and other similar items filed a suit for permanent injunction - Whether the Defendants have infringed the trademark TATA of the plaintiff, if so to what effect - Held, trade mark TATA has acquired unique goodwill and reputation in favour of the plaintiff and ipso facto due to the long and continuous user this trade mark is highly distinctive trade mark within the meaning of Section 9 of the Act - mark TATA has been protected from time to time by the Courts in relation to the similar/dis -similar goods adopted and used by the infringing parties - Hence, this trade mark is protected under Section 29(4) of the Act, 1999 - It is a well known trade mark within the meaning of Section 2(z)(b) of the Act - Because of its distinctiveness and residual goodwill and reputation, in fact, the trade mark TATA cannot be appropriated by any party in India in relation to any merchandise goods/services/trade name otherwise it would be clear case of violation of the rights of the plaintiff - In the present case, no doubt the Defendant is using the trademark TATA in relation to cutlery goods and the plaintiff may not have commercial activities of the same product but use of the said trade mark by the Defendant is an infringement of the plaintiff 's trade mark within the meaning of Section 29(4) of the Act - plaintiff has clearly established his case of infringement of trade mark - Suit accordingly decreed Intellectual Property Rights - Trade marks - Passing off - Doctrine of dilution and unfair competition - Whether the Defendants are passing off their acts as having associated with the plaintiff - Held, in passing off action, one has to see as to whether the Defendant is selling goods/service so marked to be designed or calculated to lead purchasers to believe that they are plaintiffs goods - Even if a person uses another 's well -known trademark or trade mark similar thereto for goods or services that are not similar to those provided by such other person, although it does not cause confusion among consumers as to the source of goods or services, it may cause damage to the well -known trade mark by reducing or diluting the trademarks power to indicate the source - Further, where a person uses another person 's well -known trade mark or trademark similar thereto for the purpose of diluting the trade mark, such use does not cause confusion among consumers but takes advantage of the goodwill of the well -known trade mark, it constitutes an act of unfair competition - In the present case, Defendants are indulging in the acts of passing off by representing their business as that of or associated with the plaintiff by using the impugned trade mark/name of the plaintiff - Defendants have defrauded the general public and are likely to continue to mislead/ deceive or confuse the potential customers into believing that the Defendants have the approval or license from the plaintiff which in fact is not true - Adoption and use of the said trade mark by the Defendant is only with a view to making illegal profits out of the same - Adoption of the said highly distinctive trade mark TATA by the Defendant is mala fide - Defendants ' activities to be permanently restrained by Court in relation to the relief of passing off - plaintiff has established his case of passing off - Therefore, the plaintiff 's suit for passing off is decreed as the plaintiff has discharged its burden to prove the case of passing off.
(2.)THE case of the plaintiff is that the plaintiff company, established in the year 1917 as a body corporate and is the principal investment holding company of TATA, which is India's oldest, largest and best - known conglomerate, with a turnover of over US$14,251 million or Rs. 65, 424 crores for the financial year 2003 -04. Its genesis was in 1868 when Jamsetji Nusserwanji Tata set up a private trading firm with a capital of Rs. 2000/ -.
The enterprises promoted by the plaintiff company have laid the foundation in the industrial core sectors, pioneering the textiles, steel, power, chemicals, hotels and transport industries in India.
(3.)WITH the changing global scenario, TATA have branched out into computers and computer software, electronics, telecommunications, financial services, mutual funds, food processing, tea and publishing.
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