“TATA” A Well-Known Trademark
In a recent judgment, the Delhi High Court pronounced that the mark TATA has acquired the status of a “well-known” mark on account of its usage for a long period of time.
The concept of well-known trademarks and infringement of well-known marks have been dealt with on numerous occasions by the Indian Courts as well as the IPAB. Also, Section 2 (zg) of the Trade Marks Act defines “well-known trademark” as ‘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.’
The instant case was instituted by TATA SONS LIMITED, the Plaintiff, seeking a decree of permanent injunction restraining the Defendants [RAM NIWAS & ORS] from directly or indirectly dealing in the business of providing transport; packaging and storage of goods; travel arrangement, packaging, moving services under the domain name www.tatapackers.com and/or using any trademark/name bearing the mark TATA or any other mark which is deceptively similar to the plaintiff’s trademark TATA.
In 2011, the Plaintiff came across information that the Defendants are engaged in providing transportation, packaging and storage of goods, travel arrangement and moving services under the name and style TATA PACKERS AND MOVERS.
Additionally, it was also noted that the Defendants are using the domain name www.tatapackers.com to provide all kinds of packing and moving and related services (national and international) with their branch offices situated in various cities in India.
The Court while perusing the instant case laid emphasize on the fact that Plaintiff and its predecessors have been using the mark TATA since 1868. It was submitted that the trademark and name TATA has since its adoption been extensively and continuously used by the Plaintiff, by virtue of which the trademark TATA acquired an excellent reputation from the very beginning and down the decades, the said name has consistently been associated with, and exclusively denotes the conglomeration of companies forming the TATA Group, the Plaintiff’s parent company.
Furthermore, the Plaintiff is also the registered proprietor of several TATA-formative trademarks in various classes, including Class 39 (Transport; Packaging and storage of goods; travel arrangement) and owns trademark registrations for the word TATA in over 50 countries besides India.
Based on these findings, the Court held that “It is evident that the mark TATA has been used by the plaintiff for a long period of time and enjoys reputation and goodwill and has acquired the status of a “well-known” mark.”
The Court also observed that the Defendants use and adoption of a deceptively similar tradename TATA PACKERS AND MOVERS as well as the domain name www.tatapackers.com, in relation with carrying on their business in the same field as that of the Plaintiff, is only to associate themselves with the well-known mark of the Plaintiff.
Therefore, the Court granted a decree of permanent injunction against the Defendants from using a tradename, mark, or domain bearing the trademark TATA and/or any marks confusingly or deceptively similar to the Plaintiff’s trademark TATA. Further, the Defendants were directed to transfer the domain name www.tatapackers.com in favour of the Plaintiff.
There have been numerous instances wherein the Courts of Law have upheld the protection of well-known trademarks against infringers. A well know trademark is given a blanket protection to save it from any infringement under any class of goods. However, given the similarity in the trading channels in this particular case, the judgment of permanent injunction against the Defendants is vindicated.