With the introduction of the Commercial Courts Act coupled with the Intellectual Property Division in various High Courts, the timelines for adjudication of commercial civil suits have considerably reduced.
The days when people associated litigation with Sunny Deol's famous line 'tareek pe tareek' (date after date) are long gone. The provisions for summary judgment under Order XIII-A of Civil Procedure Code,1908 ("CPC") in commercial suits have significantly reduced the need to file and present the Plaintiff's evidence in cases where the Defendant is absent.
A recent ruling to this effect was passed by the learned Single Bench of the Hon'ble Delhi High Court in the case of The Indian Hotels Company Limited vs. Manoj1. This article dwells into the aspect of summary judgement in commercial suits wherein the Hon'ble High Court restrained "Taj Iconic Membership" from using registered trademark "TAJ" of Taj Hotels.
Brief facts of the Case
TATA Group of Companies ("Plaintiff") is the
registered proprietor of numerous trademarks containing and
comprising the mark TAJ,
. The Plaintiff filed an application for
seeking summary judgment under Order XIII-A CPC against the
Director of Taj Iconic Membership. ("Defendant").
The Plaintiff has been using the trademark TAJ since 1903 with
respect to the hospitality industry and has a website dedicated to
its hotels, resorts etc., under the brand TAJ, which is available
at www.tajhotels.com. The Plaintiff is the owner
of the copyrights associated with the mark
, owner of the photographs of its TAJ
properties that have been uploaded on its website, and Epicure Card
dealing with the Plaintiff's Taj Hotel Rewards Program.
The Defendant, Mr. Manoj is the owner/Managing Director (MD) of
the defendant entity, i.e., Taj Iconic Membership. The Plaintiff
learnt about the unauthorized use of the Plaintiff's well known
and registered trademarks TAJ, , by the Defendant and filed a trademark
infringement suit against the Defendant in the Hon'ble High
Court of Delhi.
Submissions of the Plaintiff
- The Plaintiff contended that it is India's largest and best
known business conglomerate TATA Group of Companies and is the user
of the mark since 1903 and the
mark since 2016. The Plaintiff also owns a dedicated website tajhotels.com
for its hospitality services. Following are the details of
trademark registrations obtained by the Plaintiff :-
- The Plaintiff claims that Defendant is infringing on the TAJ trademarks and misappropriating content and photographs from the Plaintiff's website, i.e., tajhotels.com and Epicure Cards without permission.
- The Plaintiff further contended that the Defendant is not only guilty of infringement of the Plaintiff's trademarks but also for impersonating as Plaintiff and defrauding a jeweller of hundred gold coins worth INR 51,21,735/-. An FIR also stands lodged against the Defendant in that regard. The Plaintiff learnt that the Defendant has been misusing the Plaintiff's trademark by using TAJ as part of its business name, website, i.e., tajiconicmembership.com, Plaintiff's various content and photographs available on the Plaintiff's website etc.
Observations of the Court
- The Hon'ble Court noted that the plaintiff has been able to
establish its goodwill and reputation in respect of its registered
trademarks TAJ, , with respect to
hospitality industry. The Court further, while acknowledging the
copyrights of the Plaintiff in, stated that the Defendant has no
justification for adoption of the registered trademarks TAJ, and various other content and photographs
available on its website.
- In view of the aforesaid facts and circumstances, the Hon'ble High Court held that "it is clear that the action of the Defendant in adopting the Plaintiff's marks, photographs and content, is malafide, deliberate, and intentional and thus, constitutes infringement".
- The Hon'ble High Court further held that the use of the TAJ trademarks of the Plaintiff and contents including photographs available on Plaintiff's website has the effect of inducing the consumers and members of the trade to falsely believe that the Defendant has a direct nexus or affiliation with the Plaintiff.
Court's Order
The Hon'ble Court of Delhi vide order dated October 6, 2022 granted an ex parte ad interim injunction in favour of the Plaintiff restraining the Defendant from using the Plaintiff's trademark TAJ or any other mark/name/logo/domain name, which is deceptively or confusingly similar to the TAJ trademarks. The Defendant was proceeded ex parte after failure to enter appearance and filing of written statement.
The Hon'ble High Court further held that since Defendant neither appeared nor filed its written statement, it is clear that the Defendant is not interested in defending its actions. In view of this fact, the Plaintiff is entitled to a summary judgment under Order XIII-A of the CPC read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.
Under the aforesaid circumstances, the Hon'ble High Court granted the decree of permanent injunction against the Defendant and transfer of the domain www.tajiconicmembership.com in favor of the Plaintiff. The Court further in the interest of justice, imposed the damages to the tune of INR 10 lacs and cost of INR 5 lacs against the Defendant.
Court's power to grant a summary judgment
The intention behind granting a summary judgment, without recording oral evidence, is to dispose of the claim in a time-bound manner. The Hon'ble Court discussed the case of DS Confectionery Products Limited v.Nirmala Gupta and Another2in which it held that where the Defendant has neither entered appearance in the suit to defend the same nor filed any written statement, it is a fit case where Court has the power to grant a summary judgment in terms of Order XIII-A of the CPC, 1908. As far as damages is concerned, the Hon'ble Court observed that Courts have granted damages in various cases where Defendant, knowing fully well about the proceedings, does not appear.
In a yet another case, Cartier International AG and Others v.Gaurav Bhatia and Other3, the Hon'ble Court held that the conduct of Defendant is also a relevant factor in order to determine the relief of damages. Thus, a party who chooses not to participate in Court proceedings, should not be permitted to enjoy the benefits of evasion of Court proceedings and must suffer the consequences of damages.
Author's Note
The main issue in this case was fraudulent use of identical trademark in order to mislead the consumers. The Hon'ble Delhi High Court emphasized that this could easily mislead consumers into thinking the Defendant's hotel was part of the renowned Taj Group, even if that was not the case. This decision also highlights the importance of safeguarding well-reputed trademarks from infringement, particularly in the digital age where the misuse of similar marks can easily lead to brand misrepresentation and unfair competition. The judgement reiterated that a summary judgement is appropriate where the infringement is clear and no substantial defense is put forward by the Defendant.
Aashi Nema, Junior Associate Advocate at S.S. Rana & Co. has assisted in the research of this article.
Footnotes
1 2024:DHC:6560
2 2022 SCC OnLine Del 4013.
3 2016 SCC OnLine Del 8.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
