Manmohan Singh, J.
1. By this order, I propose to decide the pending application being I.A. No.21136/2013 (under Order XXXIX Rules 1 & 2 CPC) filed by the plaintiff seeking interim injunction.
2. The plaintiff, Brahmos Aerospace Pvt. Ltd. has filed the suit for permanent injunction restraining infringement of the trademark, passing off, unfair competition, rendition of accounts, damages, etc. against the two defendants, namely, FIIT JEE Limited, New Delhi and USA Univ. Quest, New Delhi. It is alleged in the plaint that the Government of India is the majority shareholder (50.5%) in the plaintiff-Company held by the Defence Research and Development Organization (DRDO) under the Ministry of Defence (MOD). Dr.APJ Abdul Kalam was one of the first subscribers to the Memorandum of Association in the plaintiff-Company. It is claimed that the trademark 'BRAHMOS' is a prestigious well-known and reputed trademark of the plaintiff-Company which is used by the defendants for identical services being educational services by conducting an online aptitude test. It is also alleged that the plaintiff conducts various educational programmes pertaining to the aerospace industry, including training of its employees and engineers. The defendants herein have dishonestly adopted the identical trademark in respect of the same services in order to give an impression to students that their online test is affiliated to the plaintiff. Some of the students belonging to Delhi had ranged up to the plaintiff’s office several times and have also sent e-mails to inquire whether taking the BRAHMOS aptitude test of the defendants entitles them for job(s)/internships in the plaintiff-Company.
3. It is further stated in the plaint that the plaintiff-Company was incorporated on 5th December, 1995 as BRAHMOS Private Limited and thereafter, its name was changed to BRAHMOS Aerospace Private Limited in 2003 and a fresh certificate in this regard was also issued by the Registrar of Companies. The name BRAHMOS is a unique and coined name of the plaintiff-Company formed with the conjugation of parts of names of two great rivers of India and Russia, i.e. 'Brahmputra' and 'Moskva'. The said trademark BRAHMOS being a coined word, first time was adopted by the plaintiff having no dictionary meaning, thus, by virtue of long user since 1995, it acquires distinctiveness. The said trademark BRAHMOS is also being used in several missiles including a supersonic cruise missile which the world’s fastest cruise missile in operation which travels at a speed of Mach 2.8 to 3.0. There are many other activities bearing the name BRAHMOS, the details of which are given in paras 8 to 17 of the plaint which are relied upon by the learned counsel for the plaintiff during the course of the arguments.
4. It is alleged by the plaintiff that it has tremendous success and name in the trademark BRAHMOS which has become successfully synonymous with the plaintiff in view of the great achievement, innovation and success in the international arena of missiles and aerospace.
BRAHMOS in Education
5. It is averred in the plaint that the plaintiff also plays a significant role in the arena of scientific research, training and knowledge dissemination all of which constitute education. It is also active in the business of providing technical and managerial know how, consultancy services and personal training. The plaintiff also conducts various educational programmes pertaining to the aerospace industry in the form of speeches, discussions, seminars etc. which are attended by not only people from the aerospace industry, but also by aspiring engineers and professionals. Majority of such lectures as aforesaid is delivered by Dr.S.A.Pillai (MD and CEO) of the plaintiff-Company who is the most distinguished scientist in the aerospace industry and an authority in aerospace engineering and knowledge. Some material in this regard has also been filed by the plaintiff along with the list of documents.
6. Statement is made that in all such programmes, the trademark BRAHMOS is prominently used, for which BRAHMOS has attained a reputation also in the education and training sector apart from aerospace/defence.
7. It is further stated that the plaintiff has obtained registration of the trademark BRAHMOS almost in all the classifications of goods, however, from the year 2009 including Class 41, which is the relevant class including the Classes 9, 35 and 41. This fact is strongly referred by Mr.Chaudhary, learned counsel for the plaintiff. It is also the case of the plaintiff that the plaintiff has a domain name www.brahmos.com which is used in conjugation with the domain name www.brahmand.com for the purposes of education and knowledge dissemination. It is stated that the use of the word BRAHMOS by the defendants in any manner, which is a part and parcel of the plaintiff’s domain name and constitutes a use and advertisement of the said trademark, causes an infringement of the plaintiff’s valuable right in the name BRAHMOS with regard to the domain name as well as the registered trademark of the plaintiff.
8. The plaintiff has also given the details of the promotional activities of the trademark BRAHMOS in various newspapers, i.e. Indian Express, Financial Express, Business Standard, The Hindu, The Statesman, Employment News, Mint, Hindustan Hindi, DNA, Business Bhaskar and Loksatta, and has also given the details of the expenditure incurred by the plaintiff in advertisement and promotional activities from the year 2003-2004 to 2013 in para 25 of the plaint. In para 26 of the plaint, the plaintiff has given the names of the memberships of the plaintiff, i.e. Delhi Chamber of Commerce, FICCI, CII and ASSOCHAM and has alleged that the aforesaid advertisement and memberships add substantial value to the BRAHMOS’s goodwill.
9. It is claimed that the said name BRAHMOS is a well-known trademark within the meaning of Section 2(1)(z)(g) and mark having a reputation in India within the meaning of Section 29(4) of the Trademarks Act, 1999, being an extremely popular and protected brand in earlier proceedings by this Court, thus, it covers under the definition of well-known trademark as over the years the plaintiff has also been the recipient of several awards for such impeccable quality of goods and services, the details of such awards received by the plaintiff from various countries are mentioned in para 17 of the plaint. The statement of sales under the mark/name BRAHMOS is mentioned in para 29 of the plaint which is from the year 2005-06 to 2012-13. The sale for the year 2012-13 is more than 1000 crores.
CASE AGAINST THE DEFENDANTS SET UP BY THE PLAINTIFF
10. Defendant No.1 is a coaching institute in New Delhi which tutors engineering aspirants for various entrance exams in India, like NTSE, KVPY, IIT-JEE. Defendant No.2 is a company which is somehow related to defendant No.1. The defendant No.1 is advertising a course designed for Indian students to get admission in colleges located in the United States. Both the defendants are in the field of education and they are advertising the mark BRAHMOS in various forms of print, digital and internet advertisement constituting a visual representation. It is alleged that by adopting the identical trademark BRAHMOS for the said aptitude test, read in conjugation with the phrase 'will give you top 03 career options as per your inherent aptitude', the defendants are, in fact, encashing the tremendous goodwill attached with the mark BRAHMOS of the plaintiff and the confusion is hence bound to occur, as the defendants are giving impression that somehow they are affiliated with the plaintiff.
11. As regards the actual confusion, the learned counsel for the plaintiff states that it is not required under the law. However, on 18th December, 2013, a student by the name of Saurabh Garg addressed an e-mail to the plaintiff’s HR department enquiring if he would be given any preference for employment in the plaintiff-Company by taking the BRAHMOS aptitude test conducted by the defendants. Even prior to that, various students from all over the country have telephonically raised similar queries.
12. It is further the case against the defendants as alleged by the plaintiff that just in order to encash and goodwill and reputation of the plaintiff’s name BRAHMOS which is also dominant and essential corporate name of the plaintiff, the defendants have intentionally and deliberately adopted the name BRAHMOS which is being used as trademark/mark/name in their advertisement which is available at pages 301 & 302 of the documents file. They have done so in order to encash upon the goodwill and reputation of the plaintiff by giving an impression to the prospective engineering students that their programme/test is somehow affiliated with the plaintiff which, in fact, is untrue and the students who are giving the test would be considered for employment opportunities in the plaintiff-Company and this wrong impression is being given by the defendants.
13. Reply to the injunction application has been filed by the defendants, who alleged that there are several uses of the word BRAHMOS already in the public domain including the usage relating to the Brahmo Samaj, a sect which is known for its accomplishments in the field of education, social reform and learning. The services/area of the plaintiff and the defendants are completely different. The plaintiff is using the name BRAHMOS for supersonic missiles and the defendants are using the name BRAHMOS for one of its aptitude tests for students.
14. It is stated that the defendants are offering their services by the name of FIITJEE Limited and the general public associates only the defendant No.1 with the mark FIITJEE which is an umbrella mark. The mark BRAHMOS is not being used in the form of trademark and at no point of time, the said mark BRAHMOS is used by the defendants to indicate a connection in the course of trade with the defendants. Thus, the question of infringement in the present case does not arise, as the defendant No.1 is merely giving the description of the test with the word BRAHMOS.
15. As far as the status of the plaintiff in the field of education is concerned, it is stated by the learned counsel for the defendants that the plaintiff is using the name BRAHMAND and not BRAHMOS as per the evidence and as admitted by the plaintiff. Similar is the position of domain www.brahmand.com. Counsel argued that as far as the website www.brahmos.com is concerned, that is only in relation to missile and nothing more as with regard to educational activities, as for the said purpose different name and domain name are being used by the plaintiff. Since the activities of both the plaintiff and the defendants are different, there is no question of passing off. The name BRAHMOS is adopted by the defendants for bonafide purpose which describe as one of the tests. The said name is, therefore, not protectable as prayed for.
16. As far as the e-mail of one Mr.Saurabh Garg is concerned, it is stated that the said document is an obtained document by the plaintiff in order to just inform the Court that there is confusion or deception happened in the two activities. Counsel argued that the plaintiff is not entitled for injunction under these circumstances.
17. Counsel for the defendants further argued that since the name/mark BRAHMOS is not used by the defendants as a trademark, therefore, the question of infringement and passing off does not arise. Counsel has referred the following decisions in this regard:-
(i) Pepsi Co., Inc. and Ors. vs. Hindustan Coca Cola Ltd. and Anr., 2003 (27) PTC 305 (Del) (DB).
(ii) Skyline Education Institute (I) Private Ltd. vs. S.L. Vaswani and Anr., 2010 (42) PTC 217 (SC).
(iii) National Aeronautics and Space Administration vs. Record Chemical Co. Inc.185 USPQ 563
(iv) Unidoor Ltd. vs. Marks and Spencer PLC, 1988 RPC 275.
(v) Mothercare U.K. Ltd. vs. Penguin Books Ltd., 1988 RPC 113.
18. In case the reply filed by the defendants is read in a meaningful manner, it is clear that the defendants have raised mainly the following defences in the reply, though the written statement has not been filed by the defendants:-
(i) The trademark BRAHMOS is not a distinctive trademark. It has been derived by the plaintiff from the well-known sect 'Brahmin'. Since the plaintiff is an aerospace industry and is using the name BRAHMOS for supersonic missiles and the defendants are using the name BRAHMOS in one of its aptitude test for students. Therefore, the question of confusion and deception does not arise in the present case. The relevant pages of 'Wikipedia, the free encyclopedia' have also been referred to by the defendants which indicate that 'A Brahmo is either an adherent of Brahmoism to the exclusion of all other religions, or a person with at least one Brahmo parent or guardian and who has never denied his faith.' In view thereof, monopoly cannot be extended to the plaintiff in relation to different goods.
(ii) The defendant No.1’s main trademark is FIIT JEE which is an umbrella mark. The mark BRAHMOS is not used in the form of trade. It is merely used by the defendants to indicate the connection in the course of trade. Therefore, no case of infringement of trademark is made out against the defendants.
(iii) As alleged by the plaintiff that the plaintiff conducts various educational programmes pertaining to aerospace industry, including the training to its employees and engineers, it is argued by the defendants that the said educational programme is being conducted by the plaintiff by using of the name BRAHMAND and not BRAHMOS. Counsel has relied upon the separate domain name i.e. www.brahmand.com in this regard. With regard to one of the e-mails referred by the plaintiff, it is stated that the said document is obtained/manipulated by the plaintiff in order to show the confusion and deception of two activities of the parties.
19. Before dealing with the submissions of both the parties, there are certain admitted positions in the facts of the present case. The same are that the mark BRAHMOS is not a dictionary word. In Oxford English Dictionary, the word BRAHMOS does not exist. The words 'Brahman', 'Brahmana', 'Brahmanism', 'Brahmaputra' and 'Brahmin' are available. The case of the plaintiff is that it has coined the word BRAHMOS from the names of two great rivers of India and Russia, i.e. 'Brahmputra' and 'Moskva'.
20. Admittedly, the trademark BRAHMOS is registered in favour of the plaintiff in relation to all the merchandise goods of classification including the goods and services, providing the training, entertainment, sporting and cultural activities in Class 41 and in respect of stationery goods including paper, cardboard, printed matters, bookbinding material and large number of other goods included in Class 16. The plaintiff has filed the copies of Registration Certificates, bearing No.1865106 in Class 16 and bearing No.1865131 in Class 41. As far as the use of the mark BRAHMOS in relation to the supersonic missiles being used in aerospace industry is available since December, 1995. The defendants have not denied the fact that the plaintiff is conducting the classes in the arena of scientific research training and knowledge and it is also providing education, consultancy services and various educational programmes pertaining to aerospace industry in the form of speeches, discussions, seminars, etc. However, the only submission of the defendants is that the plaintiff is using the name BRAHMAND in relation to that educational purposes and not the trademark BRAHMOS.
21. The plaintiff has also doubted the credibility of reporting of Wikipedia and states that the said document is not a reliable document and the statement made therein seems to be incorrect. In any case, it is argued that BRAHMOS is a well-known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 which has never been used by any person in India rather it has been protected by the Courts from time to time.
22. In order to understand the arguments of the parties, one has to read the definition of the 'mark' and the 'trademark' under Sections 2(1)(m) and 2(zb) of the Trade Marks Act, 1999 together. In Section 2(1)(m), the meaning of the 'mark' includes the name and word and/or any combination thereof. Similarly, as per Section 2(zb), the 'trademark' means, if the same is used in relation to goods or services for the purposes of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark.
23. The test of confusion and deception in order to prove the case of passing off has been very well discussed in the case of Laxmikant V. Patel vs. Chetanbhat Shah And Another, a judgment delivered by the Supreme Court, reported in (2002) 3 SCC 65, wherein the Apex Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. It was held that the principles which apply to trade mark are applicable to trade name also.
24. Relevant para 10 of the aforesaid judgment reads as under:-
'The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.'
In this case, the Apex Court further observed that:
'Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.'
25. In another case of passing off, a Division Bench of this Court in the case of B.K.Engineering Co. vs. Ubhi Enterprises and Anr., reported in 1985 PTC 1, Para-57 held as under:-
'Trading must not only be honest but must not even unintentionally be unfair.'
26. It is not the case of the defendants that even any caste or sect is not protectable under the law of passing off and that is rightly so because under the Scheme of the Trade Marks Act, 1999, the name, caste or any word or mark can be registered or protected under the law if a case of infringement of trademark and passing off is made out. In the present case, admittedly, the plaintiff is the prior adopter and user of the trademark BRAHMOS which is not a dictionary word and the same is allegedly coined by the plaintiff itself. The said trademark is protected by this Court in connected matters. It has been widely advertised in modern media. It has acquired a great goodwill and reputation in India and abroad in respect of supersonic missile in aerospace industry, coupled with the fact that the said trademark BRAHMOS is also a dominant part of the corporate name of the plaintiff and the educational programmes pertaining to aerospace industry being provided by the plaintiff. It might be possible that the plaintiff has also obtained the domain name www.brahmand.com but it is also not denied that the plaintiff has obtained the domain name www.brahmos.com. The plaintiff has rightly pointed out that in case the website www.brahmos.com is opened, the entire history of the plaintiff as well as the defendant can be gathered while opening the 'Google search page'.
27. As far as the argument of the defendants is concerned that the defendants’ main trademark is FIIT JEE and they are using the name BRAHMOS in order to indicate the connection in the course of the trade, is concerned, Mr.Chaudhary, learned counsel for the plaintiff has rightly pointed out various pages of the document file of the plaintiff which show the advertisement of the mark BRAHMOS by the defendant. The mark BRAHMOS has been used by the defendant in prominent manner, though it cannot be denied that the umbrella mark of the defendant is FIIT JEE.
28. The similar situation in this regard came upon before a Division Bench of this Court in the case of Jagan Nath Prem Nath vs. Bhartiya Dhoop Karyalaya reported in AIR 1975 Delhi 149. The facts of this case are that the plaintiff filed a suit for permanent injunction against the defendant for infringement and passing off of his registered trademark containing numeral ‘555’ in respect of Agarbatis. The defendant’s trademark was totally different, i.e. RAJKAMAL which was registered trademark in its favour in respect of Dhoop Agarbatis and Havan Samagaris. However, the defendant started using the numeral ‘555’ on its product. Although, the numeral ‘555’ did not appear in its registered trademark RAJKAMAL, the case of the plaintiff was that numeral ‘555’ was added deliberately. The case of the defendant before the Court was that it has added the numeral ‘555’ bonafidely in order to denote superior quality of its products. It was also stated that the defendant has applied for cancellation of the registered trademark of the plaintiff by deleting the numeral ‘555’ from the product of the plaintiff. The learned Single Judge in this case did not grant the injunction order while accepting the plea of the defendant. However, an appeal was filed before the Division Bench of this Court which was allowed and the interim injunction was passed against the defendant restraining it from using the numeral ‘555’ on its carton in respect of agarbatis, mainly, on the reason that the plaintiff is holding the registration of the trademark, numeral ‘555’ along with their main mark and by adding of this numeral ‘555’, the case of infringement under Sections 28(1) & 29 of the Trade Marks Act, 1999 is made out by the plaintiff. The Division Bench has come to the conclusion that by the use of the numeral ‘555’ by the defendant in order to denote its superior quality of goods, even the two trademarks have become deceptively similar.
29. In order to establish infringement, the main ingredients of Section 29 are that the plaintiff’s mark must be registered under the Act; the defendant’s mark is identical with or deceptively similar to the registered trade mark; and the defendant’s use of the mark is in the course of trade in respect of the goods covered by the registered trade mark. The rival marks are to be compared as a whole. Where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant’s trademark is likely to deceive and cause confusion as the registration shows the title of the registered proprietor and the things speak for themselves. In an infringement action, once a mark is used as indicating commercial origin by the defendant, no amount of added matter intended to show the true origin of the goods can effect the question. If Court finds that the defendant’s mark is closely, visually and phonetically similar, even then no further proof is necessary. It is not necessary for the plaintiff to adduce evidence of actual deception in order to prove the case of infringement. If packaging of two products is different in an action of infringement, the same is immaterial. Its validity cannot be challenged in the infringement proceedings under the Trade and Merchandise Marks Act, 1958. (See Corn Products Refining Co. vs. Shangrila Food Products Ltd. AIR 1960 SC 142, Amritdhara Pharmacy vs. Satya Deo Gupta, AIR 1963 SC 449, Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, Automatic Electric Limited vs. R.K. Dhawan and Anr., 57 (1995) DLT 49 and S.A.P. Balraj and Ors. vs. S.P.V. Nadar and Sons and Another, AIR 1963 Mad. 12.
30. Even if a word forming part of the mark has come in trade to be used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader for which confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered by general impressions or by some significant detail than by any photographic recollection of the whole. In the decision reported as De Cordova vs. Vick Chemical Co., (1951) 68 RPC 103 at page 105 the plaintiffs were the proprietors of a label containing the words 'Vick’s VapoRub' as the essential feature, registered in Jamaica, and the defendants used a similar label with the words 'Karsote Vapour Rub' as the essential feature, and it was shown that the expression 'VapoRub' had become distinctive of the plaintiff’s goods in Jamaica, an action for infringement was successful. (See De Cordova vs. Vick Chemical Co. (supra), Saville Perfumery Ld. vs. June Perfect Ld., (1941) 58 RPC 147, Parle Products (P) Ltd. vs. J.P. and Co., Mysore, AIR 1972 SC 1359 at 1362 and M/s National Chemicals and Colour Co. and others vs. Reckitt and Colman of India Limited and Another, AIR 1991 Bombay 76).
31. Despite of infringement of trademark and passing off in the present matter, there is another aspect of the matter as to whether the trademark BRAHMOS of the plaintiff is well-known trademark as alleged in the plaint. In this regard, it is necessary to examine the definition of Section 2(1)(zg) of the Trade Marks Act, 1999 which reads as under:-
'Well-known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.'
32. This Court in the very recent two cases has discussed the aspect of determination of the well-known trade mark in the cases of Bloomberg Finance LP vs. Prafull Saklecha & Ors., judgment delivered by Hon’ble S.Muralidhar, J., reported in 2013 (56) PTC 243 (Del) and Rolex Sa vs. Alex Jewellery Pvt. Ltd. and Ors., decision rendered by Hon’ble Rajiv Sahai Endlaw, J., reported in 2009(41) PTC 284 (Del).
In the case of Bloomberg Finance LP (supra), it was observed in Para 31-44, 48-51 that:
'31. As regards infringement, Section 29 of the TM Act 1999 sets out the different situations in which infringement of a registered mark can result. Section 29 of the TM Act 1999 reads as under:
29. Infringement of registered trademarks.
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trademark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.'
32. Section 29 of the TM Act contemplates the owner/proprietor of the registered trade mark alleging infringement of the said mark by another person who is neither a registered proprietor in relation to the goods and services for which the mark is registered, nor has permission to use such mark in the course of his trade. Under Section 29(1) infringement results if the mark is "identical with or deceptively similar to" the registered trade mark and is in relation to the goods and services for which the trademark has been registered. The use of infringing or impugned mark must render it "likely to be taken as being used as a trade mark".
33. Under Section 29(2)(a) infringement occurs where the impugned mark is identical with the registered trademark and the goods or service for which the impugned mark is being used is similar to the goods and services covered by the registered mark. Under Section 29(2)(b) infringement occurs where the impugned mark is similar to the registered mark and the goods and the services for which is used is identical with or similar to the goods and services for which the registered mark is used. Under Section 29(2)(c) infringement occurs where the impugned trade mark is identical to the registered trade mark and the goods or services for which the impugned mark is used is also identical to the goods/services covered by the registered trade mark.
34. An additional requirement in the above three situations for infringement to result is that the use of the impugned trademark "is likely to cause confusion on the part of the public" or "is likely to have an association with the registered trade mark". Under Section 29(3) when the impugned trademark is identical to the registered trademark and the goods/services for which it is used are also identical to the goods or services for which the registration has been granted then "the Court shall presume that it is likely to cause confusion on the part of the public".
35. Therefore, under Section 29(1), (2) and (3) for infringement to result (i) the impugned mark has to be either similar to or identical with the registered mark and (ii) the goods or services for which the impugned mark is sued has to also either be identical with or similar to the goods or services for which registration has been granted. The scenario is different as regards Section 29(4) of the TM Act 1999. For infringement to result under Section 29(4), the following conditions are required to be fulfilled:
(i) the person using the impugned mark is neither a registered proprietor in relation to the goods and services for which the mark is registered nor is using it by way of permitted use
(ii) the impugned mark must be used in the course of trade
(iii) the impugned mark has to be either similar to or identical with the registered mark
(iv) the impugned mark is used for goods or services different from those for which registration has been granted;
(v) the registered trade mark has a reputation in India;
(vi) the use of the impugned mark is without due cause, and takes unfair advantage of or is detrimental to,
(a) the distinctive character of the registered trade mark; or
(b) the reputation of the registered trade mark.
36. The expression 'mark' has been defined in Section 2(m) of the TM Act to include "a device brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof." (emphasis supplied) Therefore, for the purpose of Section 29(4), the use of a mark as part of a corporate name would also attract infringement. In other words, if the registered mark is used by a person, who is not the registered proprietor of such mark or a permitted user, as part of the corporate name under which he trades then also infringement would also result. What is however important is that the registered trade mark must be shown to have a reputation in India and should be shown to have been used by the infringer 'without due cause". Further, it should be shown that such adoption or use has resulted in the infringer taking unfair advantage of the registered mark or is detrimental to the distinctive character or repute of the registered trade mark.
37. Section 29(4) is also distinct from Section 29(1) to (3) of the TM Act in another important aspect. The element of having to demonstrate the likelihood of confusion is absent. Perhaps to balance out this element, the legislature has mandated the necessity of showing that (a) the mark has a reputation in India (b) that the mark has a distinctive character (c) the use by the infringer is without due cause. In other words, the legislative intent is to afford a stronger protection to a mark that has a reputation without the registered proprietor of such mark having to demonstrate the likelihood of confusion arising from the use of an identical or similar mark in relation to dissimilar goods and services. The words 'detriment' in the context of the 'distinctive character' of the mark brings in the concept of 'dilution' and 'blurring'. In the context of 'repute' they are also relatable to the concept of 'tarnishment' and 'degradation'. The words "takes 'unfair advantage" refers to 'free-riding' on the goodwill attached to mark which enjoys a reputation. The disjunctive 'or' between the words 'distinctive character' and 'repute' is designedly inserted to cater to a situation where a mark may not have a distinctive character and yet may have a reputation.
38. Section 2(zg) of the TM Act defines a 'well known trade mark' in relation to any goods or services to mean 'a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or service would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.' Under Section 11(9)(i) and (v), for the purposes of registration of a well-known mark it is not necessary for such mark to have been used in India or be well-known to the public at large in India. It must be well known to a substantial segment of the relevant public.
39. It may not be necessary for the proprietor of a registered mark to show that it is a 'well-known trademark' as defined in Section 2(zg) although if in fact it is, it makes it easier to satisfy the 'reputation' requirement of Section 29(4) of the TM Act. The presumption of distinctiveness attached to a registered mark is a rebuttable one. At the interim stage, either of these elements should be shown prima facie to exist. Whether in fact these elements are satisfied would depend on the evidence led by the parties at trial.
40. It may be noticed at this stage that even prior to the TM Act 1999 the Supreme Court in N.R. Dongre v. Whirlpool Corporation 1996 PTC (16) recognised the concept of cross-border reputation when it upheld the decision of the Division Bench of this Court which granted a temporary injunction in favour of a Plaintiff based abroad. The Division Bench of this Court followed the decision in Apple Computer Inc. vs. Apple Leasing & Industries 1992 (1) ALR 93, and held that it was not necessary to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of its name or mark can be restrained by the court. The main consideration was "the likelihood of confusion and consequential injury to the plaintiff and the need to protect the public from deception. Where such confusion is prima facie shown to exist, protection should be given by courts to the name or mark".
41. Turning to Section 29(5) of the TM Act 1999, it is seen that it relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction restraining order the infringer should straightway follow. This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. For the purpose of Section 29(5) of the TM Act 1999, there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.
42. However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. The question is whether in such a situation the owner or proprietor of the registered trade mark is precluded from seeking a remedy under Section 29(4) of TM Act, 1999 if the conditions attached to Section 29(4) are fulfilled.
43. In the considered view of this Court, given the object and purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) of the TM Act, 1999 otiose. In other words, the legislature may not be said to have intended not to provide a remedy where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered.
44. The Statement of Objects and Reasons of the TM Act 1999 explain that sub-section (5) of Section 29 "seeks to prevent a person from adopting someone else's trade mark as part of that person's trade name or business name by explicitly providing that such action shall also constitute an infringement under this Act. This provision will bring this clause in harmony with the proposed amendments to Sections 20 and 22 of the Companies Act, 1956.' Sections 20 and 22 of the CA have been amended to provide that where the name of a company resembles a registered trade mark, then the registration of the company in that name can be refused. The ROC is expected to gather information from the TM Registry. Under Section 22(5) of the CA, the owner of the registered trade mark can apply to have the name of a company that is purportedly infringing the mark cancelled. All of this only strengthens the conclusion that where Section 29(5) offers a high degree of protection where both the elements envisaged in that provision exist, it is not meant to preclude the owner of a registered mark remediless when only the first and not the second element exists.
48. In Mahendra & Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited (2002) 2 SCC 147, the case before the Supreme Court pertained to the grant of an injunction against the Defendant using, in any manner, as a part of its corporate name or trading style the words Mahindra & Mahindra or any word(s) deceptively similar to Mahindra or and/or Mahindra & Mahindra so as to pass off or enable others to pass off the business and/or services of the Defendant as those of the Plaintiffs or as emanating from or affiliated or in some way connected with Plaintiffs. The Defendant contended that its products were in no way similar to that of the Plaintiffs and that the business carried on by it did not overlap with the business of any of the companies enlisted by the Plaintiffs. The Supreme Court held that by using the Plaintiffs trademark as a part of its corporate name, the Defendant had committed the fraud of passing off its business and/or services as that of the Plaintiffs.
49. In Kalpataru Properties Private Limited v. Kalpataru Hospitality & Facility Management 2011 (48) PTC 135 (Bom.), the issue was whether an action in passing off was maintainable where the Plaintiff's registered mark was used as part of the Defendant's corporate name and the goods and services dealt with by the parties were in different classes. Following Mahendra and Mahendra, the Court held that a passing off action was maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar.
50. Recently, in Red Hat Inc. v. Mr. Hemant Gupta 2013 1 AD (Delhi) 130, this Court, while dealing with a case which involved the use of a registered trademark as part of its corporate name by the Defendant, held that the Plaintiff could seek a remedy for an infringement under Section 29(4) as well as Section29(5) of the TM Act 1999.
51. The legal position emerging as a result of the above discussion may be summarised as under:
(a) Section 29(5) of the TM Act 1999 relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered.
(b) This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. For the purpose of Section 29(5) of the TM Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.
(c) However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. Where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, the owner or proprietor of the registered trade mark is not precluded from seeking a remedy under Section 29(4) of TM Act 1999 if the conditions attached to Section 29(4) are fulfilled.
(d) Given the object and purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) otiose. The purpose of Section 29(5) was to offer a better protection and not to shut the door of Section 29(4) to a registered proprietor who is able to show that the registered mark enjoying a reputation in India has been used by the infringer as part of his corporate name but his business is in goods and services other than that for which the mark has been registered.
(e) A passing off action is maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar.'
In another matter of Rolex Sa (supra) it was observed as under:
'15. Section 2(4)(c) defines a well known trademark as the one which in relation to any goods, means a mark which has become so to the substantial segment of the public which uses such goods that the use of such mark in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person using the mark in relation to the first mentioned goods. In my view the segment of the public which uses the watches of the category/price range as the watches of the plaintiff, ROLEX is a well known trademark. The said segment of the public if comes across jewellery/artificial jewellery also bearing the trademark ROLEX is likely to believe that the said jewellery has a connection to the plaintiff.
16. Yet another provision in the Act, though for the guidance of the Registrar but in relation to well known trademarks is to be found in Section 11(6) of the Act. Upon testing the trademark of the plaintiff on the touchstone of the ingredients of the said provision also, I find the said trademark of the plaintiff to be satisfying the test of a well known trademark. The documents filed by the plaintiff i.e., the advertising done in the media in India since 1947 and particularly in years immediately preceding the suit, registrations obtained show that relevant section of the public in India had knowledge of the trademark ROLEX in relation to the watches. The pleadings of the plaintiff and which are not contested also show that the plaintiff for the last nearly one century has been using the said trademark spread over nearly the entire developed/developing world. The advertisements of the plaintiff had appeared in the magazines in this country even when there were import restrictions. The plaintiff has filed documents to show registration of the trademark in a large number of countries and also to show successful enforcement of its rights with respect to the said trademark.
20. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows of ROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs/demands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial/semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery/semi precious jewellery whose brand value and/or prices are quite comparable to the gold jewellery of the conventional goldsmiths.
24. The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. T
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he goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill/brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX.' 33. It appears from the abovementioned two decisions rendered by this Court read with Section 29(4) of the TM Act that a registered trademark is infringed by a person who, not being a registered proprietor or a person using the identical with or similar trademark in relation to goods or services which are not similar to those for which the trademark is registered and if the same has a reputation in India and is of distinctive character or repute of the said registered trademark. In other means, if the registered trademark is a well-known trademark which covers the definition of Section 2(1)(zg) of 'well-known trademark', the same can be protected even in relation to dissimilar goods used by the defendant. Although, in the present case, it appears to the Court that the plaintiff is also providing educational training and programmes. 34. Now, it is to be considered, as to whether the trademark BRAHMOS comes within the meaning of 'well-known trademark'. It is an undisputed fact that the trademark BRAHMOS is a registered trademark which is associated in the substantial segment of public as the same is being used for supersonic missile in the aerospace industry. The said trademark is being used in relation to the goods and the same also come within the definition of Sections 2(1)(m) and 2(1)(zg) being a registered trademark in the course of trade and it has been protected by the Courts in earlier proceedings. Thus, I have no hesitation to come to the conclusion that the trademark BRAHMOS is a well-known trademark. The moment BRAHMOS comes within the range of well-known trademark, it is even protected in relation to dissimilar services. 35. Assuming the submission of the defendants is accepted that the two set of activities are different, even then the case of infringement of trademark is made out against the defendants. The argument of the defendants is also totally frivolous when it is argued that the defendants are not using the mark BRAHMOS as a trademark and it is being used by the defendants to indicate a connection in the course of trade with the defendants. In case the advertisements of the defendants appearing in the newspapers are seen, it appears that the mark BRAHMOS has been used prominently despite of the fact that FIIT JEE is an umbrella mark of the defendants. There is no valid justification given by the defendants before this Court how this trademark BRAHMOS is hit upon the defendants except false and frivolous submissions are made by the defendants. It is adopted and used by the defendants deliberately in order to take the advantage of the mark BRAHMOS of the plaintiff. 36. The judgments referred by the learned counsel for the defendants are not applicable in the present case in view of the judgments passed by the Supreme Court and peculiar facts and circumstances of the present case. 37. Under these circumstances, the plaintiff has been able to make out a strong prima facie case for the grant of interim injunction. Since the plaintiff is the registered proprietor of the trademark, the case of infringement is also made out so as passing off in view of the judgments referred above. The balance of convenience also lies in favour of the plaintiff and against the defendants. In case, the defendants are not allowed to use the trademark BRAHMOS to conduct in the course of trade as alleged by them, they can use another name in order to avoid the confusion and deception. At the same time, if the interim order is not passed, the exclusive right of the plaintiff to take benefit of goodwill, name and reputation would be breached. The plaintiff will also suffer an irreparable loss and injury in case the interim order is not passed. 38. Considering the overall facts and circumstances of the case, the defendants, their servants, agents and all other persons acting on their behalf are restrained from using the trademark BRAHMOS in relation to educational activities or part of domain name and in any manner whatsoever in order to create the confusion and deception and infringing the trademark of the plaintiff. 39. The application is accordingly allowed and disposed of. CS(OS) No.2655/2013 The parties to complete the pleadings within eight weeks from today. List the matter before the Joint Registrar on 30th April, 2014 for admission/denial of the documents, and before Court on 26th May, 2014 for framing of issues and directions for trial.