Case Analysis: Tata Sons Limited v. Gina Kilindo

Tata Sons Limited v. Gina Kilindo CS (OS) No. 46 of 2014
Facts: The Plaintiff is a body corporate founded in the year 1917 and the same is a principal investment holding corporate of the Tata Group. Tata Sons Limited is the founder of the popular trademark TATA along with a T within the circle device mark. While, the defendant is owner of Tata Agro Holding Ltd, another defendant and also a registrant of the impugned domains named, tataagro.com, tataagro.biz and tataagro.net, and tataagro.org. Now, it was alleged by the plaintiff that both the defendants were trying to draw the unwary consumers and the public at large and further they also indulge in the business of providing prowess in investment distribution around different sectors like agriculture, poultry, and its alike services. Other than copying the plaintiff’s “T within a circle” Trademark, they have unauthorizedly used plaintiff company’s slogan, “Leadership with Trust”. Plaintiff’s well-known trademark has been used by the defendants for all its domains and its corporate, Tata Agro Holding Limited. The defendants also have pages on famous social media handles namely such as Facebook and Twitter.

Issue: Whether the illegitimate trade activities of the defendants bound to cause harm to the business, reputation of the plaintiff?

Judgement: The Hon’ble court said that considering the fact that the plaintiff trademark, TATA which is a popular trademark enjoying goodwill beyond the barriers of geography, language, ideology and class the use of the plaintiff’s name by the defendants in their company name, and further the use of the mark, “T within a circle” clearly amounts to faulty trade description under the provisions of the Trade Marks Act, 1999. In the given case, the profits made out by the plaintiff out of their illegitimate activities amount to unjust enrichment, by inducing the purchasers to fraudulently believe that:

1. The plaintiffs affiliate the defendants and both have direct nexus with each other.
2. The defendants have acquired the license to apply the trademark, TATA in relation this group of products; or
3. The trade transaction of the defendant has been endorsed by the plaintiff.

The said ill legitimate act of the defendants have caused the plaintiff to suffer losses and incalculable injury in respect of its business and overall reputation. The unjust enrichment made by the defendants through its illegal act makes a strong prima facie case. Thus, there is a strong case in the favour of the plaintiff for the grant of an ex-parte order. Lastly, the court temporarily restricted the defendants and their partners from selling, and advertising under the above given domain names bearing the trademark, TATA, “T withing a circle” and the aforesaid slogan. The defendants have also been restrained from engaging in any act which shall cause dilution and tarnishment of the popular trademark of the plaintiff. An ad interim injunction order was also passed against the defendant directing the same to take down its social media handle pages and putting on hold its aforementioned domains.
Authored By: Adv. Anant Sharma & Aniket Pandey