S. Ravindra Bhat, J. (Open Court).
1. The plaintiff in this suit seeks permanent injunction to restrain the defendants, their assigns, employees, servants agents, dealers or representatives and any others acting on their behalf, from filing any trademark application for the mark "INFOSYS" or"INFY" ("the mark") in isolation or conjunction with any other mark or name and from passing off their goods and/or services and/or business by manufacturing,Marketing,selling, advertising, directly or indirectly dealing in goods/services, under the trade mark "INFOSYS", or otherwise using the expression `INFOSYS' or` INFY, whether used in isolation or in conjunction with any other word/ expression. They also seek further restraint of the defendants from infringing the registered trade mark Nos. 475269, 475267 and 484837 and subsequent registrations along with an order for delivery up of all goods, stationery including letterheads and business cards, dies, blocks or any other articles bearing the impugned trade mark "INFOSYS" or capable of reproducing the mark/name "INFOSYS" for destruction and erasure. Damages for Rs. 20 Lakhs are also claimed.
2. The Plaintiff was incorporated as Infosys Consultants Pvt. Ltd. on 02.07.1981. In April, 1992, it shifted its base from the state of Maharashtra to Karnataka and in April, 1992 it changed its name to Infosys Technologies Pvt. Ltd.; in June, 1992 it became a public company. The plaintiff contends that due to long, extensive use and substantial promotional activities, the mark/name has acquired phenomenal goodwill and reputation, and consumers and general public all over India associate the trade mark/name exclusively with the plaintiff. It claims that its mark is a well-known trade mark as defined in section 2(1)(zg) of the Trade Marks Act, 1999 (hereafter "the Act").
3. The plaintiff contends that the first defendant, Marwadi Infosys Pvt. Ltd., is engaged in the business of computer related products, which is similar and directly relatable to its (plaintiffs) business. The second, third and fourth defendants are the directors in the first defendant company and in effective control and administration of the affairs of the first defendant.
4. The plaintiff submits to having conducted a survey on or around August, 2003 and having discovered that the defendants are using the expression "Infosys" prominently and that they are involved in the business, inter alia, of website development, web based software development, web marketing, domain registration and stand alone turnkey software projects. Under the circumstances, the plaintiff served upon the defendants a "cease and desist" legal notice dated 06.08.2003; not receiving a response from their end another similar notice dated 16.01.2007. It is alleged that the defendants, in complete disregard of the plaintiffs requests and monitions, were still continuing using the infringing mark prominently in their dealings. Further, the defendants' unauthorized use of the plaintiffs registered mark wrongfully depicts that their (the defendants') services are connected to the plaintiffs and is certain to mislead the consumers and public at large.
5. The plaintiff alleges mala fides against the defendants and asserts that by using the infringing mark the defendants are likely to and must have caused confusion/deception amongst the trade and public at large to the effect that goods and services of the defendants originate from, or have a trade connection, approval or association with the plaintiff. This, says the plaintiff, is a misrepresentation constituting a tort of passing off of the goods/services of the defendants as those of the plaintiff.
6. The defendants in this proceeding were proceeded against ex-parte by order dated 11.08.2008 as they refused to receive summons sent to them by registered post and service was treated as complete. The plaintiff filed their
ex-parteevidence by way of affidavit in the matter. In this view, only the facts urged by the plaintiff and established through the evidence by way of affidavit shall be considered for adjudication of the suit.
7. The plaintiffs case is sought to be proved through the deposition of Shri Praveen Vishwas, who is its constituted attorney. He corroborated the version set out in the suit, deposing about the plaintiffs global reputation and business activities in various countries, throughout the world, as well as in India. He stated that the plaintiff employed about 72,000 people of 65 nationalities. According to the deposition, the mark "INFOSYS" is a coined term, and is inherently distinguishable, having acquired distinctiveness in relation to the plaintiffs products and services. The plaintiffs trademark registrations in various classes have been testified in para 11 of the deposition, through affidavit; they are produced as Ex. P-2 (Collectively). In para 16, the deposition testifies about the plaintiffs achievements, on various dates, in various world events, and the awards of excellence earned by it. According to the witness, the plaintiff spent Rs. 92.07 crores towards advertisement and promotion of its product, mark and services, in 2001; the figure, for 2005-06 was Rs. 74 crores. He produced the copy of the cease and desist notice issued to the defendant, on 16.01.2007, as Ex. P-6. It is also stated in the suit that the defendant's name appears in the yellow pages, listed with the term "INFOSYS". The plaintiff also relies on an extract obtained from the Registrar of Companies.
8. The plaintiff has been able to establish a global reputation for its products and services and that its mark "Infosys" is distinctive of its business brand in India and other parts of the world as well. Further, the plaintiff holds registered trademark for the expression "Infosys". The use of that mark by the plaintiffs for a period of more than two decades puts and extensive expenditure by them, as stands established, on advertisement and promotional activities also supports the claim of the plaintiff that the mark is a well-known trademark as defined under section 2(1)(zg) of the Trade Marks Act, 1999. To prevent any confusion and protect their registered trademark from infringement the plaintiff has, from time to time, published various caution notices in leading newspapers and journals in 1996, 1999, 2000, 2004 and 2007. Further, the plaintiff has also established that it had, on discovering the fact of infringement adopted the due process of law and served `cease and desist' notices on the defendants on two occasions, first in the year 2003 and other in 2007.
9. In support of their case the plaintiff relies upon a judgment of this court which was it i.e.Infosys Technologies Ltd. v. Park Infosys and Ors., 2007 (34) 178 (DEL). The facts alleged and grounds taken are similar to those in the present case. The defendants there were also using the expression "Infosys" as a prominent part of their business/trade name and domain name. After noticing various provisions of law and relevant precedents the court, in that matter held as under :
"27. The trade mark' Infosys' is certainly associated distinctively with the business and trade of the plaintiff. The prefix by the defendant of the word "Park" before the trademark 'Infosys' is certainly of no significance in as much as the word 'Infosys' is distinctive of the business and trade of the plaintiff. There can be no manner of doubt that use by the defendant is likely to result in confusion and the same has propensity of diverting customers and business of the plaintiff to the defendant. It is well settled that honesty and fairplay are required to be the basic policies in business and trading and no person has any right to carry on his business in such a way as would lead the public into believing that the goods or services belonging to someone else are his or associated therewith. The service range of the defendant is also similar to that of the plaintiff. In this view of the matter, I am of the considered view that the plaintiff is entitled to a decree for injunction as prayed for.
10. The facts and legal position averred by the plaintiff in this case are closely similar to what were before the court in that case. In that case the defendants were using the expression `Park Infosys' and more prominently `Infosys' in respect of their goods and services as a part of their trademark and corporate name. In this case the defendants are marketing their services under the business name 'Marwari Infosys Pvt. Ltd.', they are using 'Infosys' as a salient part of the expression. By promoting their services under that expression the defendants are most certainly trading on the goodwill that the plaintiff has acquired in its trade by delivering quality services and undertaking extensive brand building exercises. There is nothing on record to suggest that the defendants could have bona fide hit upon the same expression "INFOSYS" in relation to the same or similar products and services. The mark is a coined phrase, and has acquired a strong secondary meaning, connecting it with the plaintiffs services. The facts revealed to this court are sufficient to hold that the defendant is indulging in infringement of the plaintiffs trademarks, with the attendant confusion. There is no reason why this court should deviate from what was held in that case. The plaintiff is thus, held entitled for a decree of injunction as is claimed.
11. On the question of damages it is settled that the assessment of damages has to be based on cogent evidence furnished for the purpose. In its additional evidence by way of affidavit the plaintiff has not provided any record of the business procured by the defendants as being detrimental to the business of the plaintiff nor has it annexed a statement of Loss of profits suffered by it on account of business diversion due to the defendants using the mark. All that is stated by the plaintiff is that the profits made by the defendants by misappropriating the goodwill and reputation, as well as on account of business diversion is the loss suffered by the plaintiff and that as it has no access to the accounts of the defendants, it is unable to assess the profits made by them. In Infosys Technologies (supra), the court after noticing the observations of the court in Microsoft Corporation v. Yogesh Popat and Anr. 118 (2005) DLT. 580, The Heels v. V.K. Abrol and Anr. CS (OS) No. 1385/2005, Hindustan Pencils Ltd. v. Aparna Enamel Industries 131 (2006) DLT 65 and Hero Honda Motors Ltd. v. Shree Assuramji Scooters 125 (2005) DLT 504 and discussing the reasoning of the court in detail and distinguishing the facts and law cited in those cases from the case for consideration before the court held as under :
"42. Upon a consideration of the plaint and the affidavit by way of the evidence filed before this court, I find that the plaintiff has failed to prove either the profits derived by the defendant from its illegal activities or such sales record
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to establish the loss which has resulted to the plaintiff by establishing a decline in the value of its business or a fall in the percentage increase in the business as compared to preceding years. The only material which has been placed by the plaintiff on record is the value of its international sales over different years. Bald figures without even an assertion of loss or diminution in business and without any submission in this behalf do not establish the essential features noticed above which would have entitled the plaintiff to damages. Therefore, while holding that the defendants cannot be permitted to continue with its illegal activities, however, I find that no award of damages can be made in favor of the plaintiff." The court is entirely in agreement with the above observations, in the previous case (supra); the plaintiff cannot claim anything more than costs of these proceedings. 12. In view of the above discussion, the suit is entitled to succeed in so far as the claim for permanent injunction is concerned. Accordingly, the suit is decreed in terms of Para 29 (i); with costs. Counsel's fee is quantified at Rs. 25,000/-. Let decree be drawn in these terms. Suit decreed.