Delhi High Court
Tata Sons Private Limited & Ors. vs Tushar Fulare on 10 January, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~42
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 10th January, 2024
+ CS(COMM) 242/2022
TATA SONS PRIVATE LIMITED & ORS. ..... Plaintiffs
Through: Mr. Rohil Bansal, Mr. Achuthan
Sreekumar and Ms. Apoorva
Prasadar, Advocates.
versus
TUSHAR FULARE ..... Defendant
Through: Mr. Manish Sharma, Mr. Mohit Rana,
Mr. A. S. Aman, Ms. Shivangi
Agnihotri and Mr. Shailesh,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J. (Oral):
I.A. 5415/2023(under Order XIIIA r/w Section 151 of CPC on behalf of Plaintiffs)
Case of the Plaintiffs
1. The present suit relates to copyright infringement of a distinctive trade dress and packaging associated with Plaintiffs' mineral water product manufactured and sold under the brand "TATA WATER PLUS", as well as infringement of Plaintiffs' registered well-known trademark "TATA" and "TATA WATER PLUS". Plaintiffs seek inter alia permanent injunction,
Signature Not Verified Digitally Signed CS(COMM) 242/2022 Page 1 of 7 By:SAPNA SETHI Signing Date:19.01.2024 17:28:40 damages and rendition of accounts. Defendant is engaged in the business of marketing, selling, offering for sale, distributing, advertising packaged drinking water under the brand/name "ZINC WATER PLUS", with a trade
dress, i.e., , which is similar to that of the Plaintiffs'.
2. Plaintiff No. 1 owns the well-known trademark "TATA" and its various permutations/combinations thereof, including the mark "TATA WATER PLUS" in Classes 16 and 32. Plaintiff Nos. 2 and 3 have been permitted to use the mark "TATA WATER PLUS" vide a trademark license agreement dated 26th August, 2011. Plaintiffs are also the registered proprietors of "HIMALAYAN", "TATA GLUCO PLUS", "TATA GLUCO+", and other marks containing and comprising these marks.
Plaintiffs' "TATA WATER PLUS" products bearing the packaging, artistic work (copyright in which is owned by Plaintiffs) and trade dress are reproduced below:
3. Plaintiffs have supplied a table of approximate revenues and expenditure on advertising and marketing, which is reproduced below:
Signature Not Verified Digitally Signed CS(COMM) 242/2022 Page 2 of 7 By:SAPNA SETHI Signing Date:19.01.2024 17:28:40
4. Owing to the Plaintiffs' long, uninterrupted and continuous use of the said unique trade dress and packaging for the aforementioned products, the said trade dress and packaging has acquired a secondary significance, distinctiveness and a unique association with the Plaintiffs' business.
Therefore, any person using the said packaging or the essential features of the artistic work or brand identifiers of the said packaging on its products is bound to create confusion as to the source or origin of such products.
5. The Defendant (Tushar Fulare) is purportedly the sole proprietor of an entity called M/s. Zinc International Corporation, engaged in the business of marketing, selling, offering for sale, distributing and advertising of packaged drinking water under the brand / name "ZINC WATER PLUS" i.e.
("Impugned Marks"), which is deceptively similar to the Plaintiffs' trademark. During early February, 2022, the Plaintiffs through various sources learnt that the Defendant is dealing in packaged drinking mineral water bearing the Impugned Marks, and an independent investigator hired by the Plaintiffs confirmed the same. Internet searches revealed that the Defendant entity has its own official websites at
Signature Not Verified Digitally Signed CS(COMM) 242/2022 Page 3 of 7 By:SAPNA SETHI Signing Date:19.01.2024 17:28:40 <www.immunitywaterplus.com> and <www.zincwaterplus.com>. These websites clearly mention that the Defendant entity is engaged in the business of manufacturing and supply of packaged drinking water bottles under the Impugned Marks. The investigator is said to have visited the manufacturing facilities of the Defendant, and photographs annexed to the plaint demonstrate that the Defendant had been engaged in manufacture of a significant quantity of packaged water products bearing similarity to that of the Plaintiffs' trademarks. The investigation also revealed that associates of the Defendant were offering franchisees, and without authorization from the Plaintiffs, promising business contracts with the Plaintiffs in exchange for money.
Present Proceedings
6. There is no reply filed to the instant application. Defendant has also not filed written statement to controvert Plaintiffs' assertions or led evidence to prove the contrary. Thus, there is deemed admission of Plaintiffs' claim in entirety and the Court need not delve into any other aspect. Nonetheless, documentary evidence produced before the Court proves Plaintiffs' case for grant of reliefs sought in the suit. Mr. Manish Sharma, counsel for Defendant, on instructions, states that he does not have any objection to the suit being decreed against Defendant, in terms of prayers at Paragraph No. 99 (i) to (v) of the plaint with modification. Mr. Sharma, however, clarifies that in respect of the said prayers, no injunction should be directed with respect to the mark "ZINC WATER PLUS", as these are all common and generic words which are commonly used for packaging of water. It is also pointed out that Plaintiffs do not have registration of "ZINC WATER
Signature Not Verified Digitally Signed CS(COMM) 242/2022 Page 4 of 7 By:SAPNA SETHI Signing Date:19.01.2024 17:28:40 PLUS" mark.
7. Mr. Rohil Bansal, counsel for Plaintiffs, agrees to the aforesaid submissions, and states that he will confine the present suit with respect to the remaining marks mentioned in the prayer clause, i.e., "TATA", "TATA WATER PLUS", "TATA GLUCO+" and "HIMALAYAN" (together, "Plaintiffs' Marks"). However, he states that packaging used by Defendant,
i.e., ' ' and , which is impugned in the present petition should be injuncted, as it uses the trade dress, artistic work and the unique and distinct packaging of the Plaintiffs' products.
8. Thus, the Court is of the opinion that the present case is fit for passing a summary judgment under Order XIII-A of Code of Civil Procedure (1908) as applicable to commercial disputes, read with Rule 27 of Delhi High Court Intellectual Property Division Rules, 2022 ("IPD Rules"). Accordingly, in light of the above, the suit is decreed in favour of Plaintiffs and against Defendant in following terms:
8.1 The Defendant and his associates are hereby restrained in terms of prayers contained in Paragraph 99 (i)-(iii) of the plaint. 8.2 Defendant and his associates are also directed to take down all references to the products bearing Plaintiffs' Marks from their websites <www.immunitywaterplus.com> and <www.zincwaterplus.com> and from
Signature Not Verified Digitally Signed CS(COMM) 242/2022 Page 5 of 7 By:SAPNA SETHI Signing Date:19.01.2024 17:28:40 all other platforms (online and offline) owned, controlled and operated by the Defendant either directly or indirectly; and 8.3 The aforenoted final decree of injunction shall also apply to the label
' '.
9. With regards to prayer at paragraph 99(viii) of the plaint, which is for damages, Mr. Bansal presses for nominal damages to be awarded. It is pointed out that Local Commissioner, appointed by this Court, in his report has recovered goods which were infringing from Defendant's premises.
Local Commissioner, who visited the premises, has made the following observations:
"The premises were searched and I was assisted by Mr. Rahul Vats Adv. (Counsel / Representative of the Plaintiff). There were 5 Cartons of ZINC WATER PLUS having 12 bottles in one Carton and Empty Boxes of TATA WATER PLUS COPPER (200) and one Roll of TATA WATER PLUS found in the Defendant's premise. A list of inventory was prepared which is annexed herewith as Annexure C."
10. In light of the above, considering the facts and circumstances of the case and the nature of recovery made, in the opinion of the court, it would be appropriate to award damages of INR 50,000/- in favour of Plaintiffs and against Defendant. It is ordered accordingly.
11. The Plaintiff is also entitled to actual costs, in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with IPD Rules, recoverable from the Defendant. Plaintiff shall file its bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 on or before 31 st January 2024. As and
Signature Not Verified Digitally Signed CS(COMM) 242/2022 Page 6 of 7 By:SAPNA SETHI Signing Date:19.01.2024 17:28:40 when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
12. Disposed of.
CS(COMM) 242/2022
13. The suit is decreed in favour of Plaintiffs and against Defendant in terms of order passed in I.A. 5415/2023.
14. Decree Sheet be drawn up.
SANJEEV NARULA, J JANUARY 10, 2024 d.negi
Signature Not Verified Digitally Signed CS(COMM) 242/2022 Page 7 of 7 By:SAPNA SETHI Signing Date:19.01.2024 17:28:40
