Court finds infringement based on dilution doctrine

India
In Tata Sons Ltd v Jawed (CS(OS) 264/2008 and CS(OS) 232/2009, March 28 2011), the Delhi High Court has held that the defendants had infringed the well-known trademark TATA.
 
The case involved two suits filed by the plaintiff, Tata Sons Limited, for infringement of its TATA mark. The name Tata has been used by the plaintiff since 1917. The name has consistently been associated with, and exclusively denotes, the conglomerate of companies forming the Tata Group. The group consists of over 100 companies, of which 50 use 'Tata' as an essential part of their corporate name. Besides the TATA mark, the plaintiff also owns a device mark consisting of the letter 'T' in a circle.
 
The defendants in the first suit (Manoj Dodia and Manish Dodia) were the co-owners of M/s Durga Scale Co, which manufactured and sold weighing scales and spring balances under the trademark A-ONE TATA. Alleging infringement and passing off, the plaintiff requested a permanent injunction restraining the defendants from manufacturing, selling, advertising, and directly or indirectly dealing in weighing scales and springing balances or goods of any description bearing the trademark A-ONE TATA or any other mark confusingly similar to the plaintiff’s mark. The plaintiff also sought delivery of all the goods bearing the impugned trademark with a view to destroying them. It also sought damages and an account of profits.
 
The defendant in the second case (Md Jawed) sold spare parts for automobiles under the trading name TATA Points, and also used the ‘T' device mark on invoices, business cards and other documents. The plaintiff sought an injunction restraining Jawed from using the trademark TATA or any other mark confusingly similar to it, alleging that it amounted to passing off.
 
The plaintiff argued as follows:
  • The word 'Tata' has acquired the status of well-known trademark and the defendants infringed its rights by using the mark without authorisation.
  • The defendants' marks were inherently deceptive and misrepresented to consumers that the defendants' goods were those of the plaintiff or approved by it.
  • Such misrepresentation would inevitably lead to confusion or deception in the mind of consumers and would result in the defendants free-riding on the plaintiff’s goodwill and reputation, thereby amounting to passing off.
Based on the Agreement on Trade-Related Aspects of Intellectual Property Rights and the doctrine of dilution, the Delhi High Court emphasised that use of a well-known trademark (even in respect of goods or services which are not similar to those provided by the trademark owner), although it may not cause confusion among consumers as to the source of the goods or services, may cause damage to the reputation of the well-known trademark by reducing or diluting its ability to indicate the source of goods or services.
 
The court went on to discuss the provisions of the Trademarks Act 1999 pertaining to the infringement of well-known trademarks, thus treating the actions of the defendants as acts of infringement.
 
The court concluded that the defendants were guilty of infringing the plaintiff's trademark. It awarded punitive damages of Rs200,000 against the first defendant and a restraining order against the second defendant.
  
The Trademarks Act does not specify the factors which the courts must take into account in determining whether a mark is well-known, but does contain factors that the trademarks registrar must consider, including:
  • the relevant public's knowledge and recognition of the mark;
  • the duration of use of the mark;
  • the products and services in relation to which the mark is being used;
  • the method, frequency, extent and duration of advertising and promotion of the mark;
  • the geographical extent of the trading area in which the mark is used;
  • the status of registration of the mark;
  • the volume of business for the goods or services sold under the mark;
  • the nature and extent of the use of identical or similar marks by other parties;
  • the extent to which the rights in the mark have been successfully enforced (particularly before the courts and the trademark registry); and
  • the actual or potential number of persons consuming the goods or availing the services sold under the mark.
Prerak Hora, Nishith Desai Associates - Legal & Tax Counselling Worldwide, Mumbai

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