India’s leading corporate house, Tata Sons Pvt Ltd and its group company, Tata Capital Limited, filed a suit against Krishna Kumar (Defendant No 1), M/s Tata Finserve Pvt Ltd (Defendant No 2) and Rajesh (Defendant No 3). We on behalf of Tata Sons filed for permanent injunction, infringement of registered trademark (TATA and other similar TATA formative marks), passing off, damages, rendition of accounts, delivery up; and transfer of domain name (www.tatafinserve.com)
What’s the matter?
- The defendants were dealing in financial services and other related services under the name and style of Tata Finserve Pvt Ltd. /Tata Finance Corporation Ltd. /Tata Finance Services and were using the well-known mark TATA on its corporate name i.e. M/S Tata Finserve Pvt Ltd.
- The defendants were using the Plaintiffs ‘T with a circle’ device mark on in which the plaintiffs have statutory and common law rights.
- The defendants were also using the domain name www.tatafinserve.com and the website which was parked on the said domain name.
- The said defendants could also be contacted for financial investments on the email address i.e. T within circle device mark provided on the website hosted on the impugned domain name.
- The defendants website www.tatafinserve.com clearly revealed a striking resemblance to the plaintiffs website namely www.tatacapitalfinancialservices.com and www.tatacapital.com in terms of layout, color scheme and manner of depiction of product and services and were involved in identical business activities as that of plaintiff.
- The Defendants without seeking requisite permission made references to other group entities i.e. TATA Mutual Fund, TATA Life.
What we did?
We on behalf of TATA Sons presented before the court, the documents pertaining to the “well-known” status of the TATA name/mark highlighting the immense reputation and goodwill enjoyed by Tata Sons and its group companies by virtue of priority in adoption since 1917.
It was argued that the plaintiff being the proprietor of the name/trademark TATA holds exclusive rights in the said trademark and is entitled to take action against any unauthorized use thereof by third parties for manufacture/sale/offering of any goods or services and even incorporation in whole or in part in domain names. The plaintiff 1 and its subsidiaries/group companies is also the registered proprietor of mark ‘TATA’, ‘T Within a circle’ as well as other TATA formative trademarks in relation to various goods across various classes.
The matter was decreed and a permanent injunction was granted by the Delhi High Court in favor of Tata Sons restraining the defendants from:
- Selling, offering to sale, advertising and dealing in business of providing loans, insurance, financial services and other related services under the name and style of Tata Finserve Pvt Ltd./ /Tata Finance Corporation Ltd. /Tata Finance Services
- From using the domain name and website tatafinserve.com
- From using the well-known mark TATA and device mark T with a circle and any other marks identical to plaintiff.
- The defendants were restrained from using the mark TATA and other deceptively similar marks as that of plaintiffs.
- The defendants were instructed to pay 10 lakh as Compensatory and Punitive damages to the plaintiff on account of infringing the registered marks, Trade Dress and for violating the interim order (dated 23/02/2015) that amounted to immense loss of Goodwill and reputation to the plaintiff.
- The plaintiffs were also entitled to interest @10% per annum on the damages from the date of filing to the date of realization of the suit.
- Cost of the suit is also awarded to the plaintiff.