CITICORP BUSINESS & FINANCIAL SERVICES PVT LTD vs. CITI GROUP INC & ANR

$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ FAO(OS) 43/2018 & CM Nos.9695-9697/2018
th
% Date of decision : 17 July, 2018

CITICORP BUSINESS & FINANCIAL SERVICES PVT LTD
..... Appellant
Through : Mr Ram Ekbal Roy, Adv.
versus
CITI GROUP INC & ANR ..... Respondents
Through : Mr. Karan Bajaj and
Mr. Dhruv Nayar, Advs.
CORAM:
HON'BLE THE ACTING CHIEF JUSTICE
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT (ORAL)
GITA MITTAL, ACTING CHIEF JUSTICE
CM No. 9695/2018 ( for exemption )
Allowed subject to just exceptions. This application is disposed of.
CM No. 9697/2018 ( for condonation of delay of 1140 days in filing
the appeal )
1. By way of this appeal, the appellant has assailed an order dated
th
24 November, 2014 passed by the learned Single Judge in CS(OS)
No. 1789/2013 Citi Group Inc.& Anr. v. Citicorp Business &
Financial Services Pvt. Ltd. , a suit filed by the present respondent
against the appellant/defendant complaining of infringement of its
FAO(OS)No.43/2018 Page 1 of 14



registered trademarks/name Citi and Citi Group by the appellants as
well as passing off and unfair trade competition.
2. By a separate order passed today, we have dismissed FAO(OS)
th
42/2018, which laid a challenge to order dated 9 January, 2018 in the
aforesaid suit, as being not maintainable in view of the bar prescribed
under Section 13 of the Commercial Courts, Commercial Division and
Commercial Appellate Division of High Courts Act, 2015.
3. Premised on the assertions in the suit, the respondent had made
a prayer for grant of permanent prohibitory injunction as well as
damages. The respondent claimed to be registered proprietors of the
marks as follows:

FAO(OS)No.43/2018 Page 2 of 14

4. The word Citi Corp was registered in Class 16 as back as on
th
14 March, 1975.
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st
5. The respondent had claimed use of the Citi Corp mark since 31
th
December, 1972 and registration from 16 December, 2003. Detailed
assertions with regard to the extensive business being carried on by
the plaintiff/respondents and the reputation attached to these
trademarks was asserted in the plaint.
6. The learned Single Judge has noted the factum of registration of
the trademarks Citi and Citi Corp in favour of the
respondents/plaintiffs herein. It is also noted that the plaintiff had
spent hundreds and millions of dollars marketing its permanent print
which included Citi Bank and Citigroup amongst others, every year.
Details of the Advertising and Marketing Budget for the global
consumer groups for the years 1998-2011 have been provided in the
plaint.
7. So far as the presence of the plaintiffs in India is concerned, we
extract the facts noted by the learned Single Judge in para 18 of the
th
order dated 24 November, 2014, the learned Single Judge has noted
as follows :
“18. In India, the first branch of the plaintiffs opened in
Calcutta in the year 1992. At present the plaintiffs have
branches in Ahmedabad, Akola, Aurangabad, Bengaluru,
Bhopal, Bhubaneswar, Chandigarh, Chennai, Cochin,
Coimbatore, Delhi, Faridabad, Gurgaon, Hyderabad,
Indore, Jaipur, Jalandhar, Kolkata, Lucknow, Ludhiana,
Mumbai, Nanded, Nandyal, Nasik, Noida, Pondicherry,
Pune, Surat, Vadodara and Vapi. Additionally the plaintiffs
have an extensive network of 700 ATMs (Automated Teller
Machine) across India. The annual turnover/ revenue of
the plaintiffs in the last 19 years in India is given in Para
FAO(OS)No.43/2018 Page 4 of 14



17 of the plaint, out of which the revenue for the year 2012
is stated to be US$ 1,832.1 million. Details of the annual
marketing expenditure incurred by the plaintiffs in India in
the last few years for credit cards and retail banking alone
is provided in Para 18 of the plaint, out of which the said
amount for the year 2012 is US$ 23.88 million.

19. In the year 2012 the plaintiffs' celebrated its 200th
Anniversary through extensive marketing and advertising
around the world with their campaign 200 YEARS CITI.
The said campaign features the achievements and
contributions of the plaintiffs over the past 200 years, some
of them are mentioned in Para 20 of the plaint.

20. Plaintiffs in the year 2011 received the award for the
"Best Consumer Internet Bank in India" by Global Finance
for the third year in a row. Additionally the Plaintiffs have
also been awarded in 2011 the "Best Foreign Bank Brand"
in India by the Economic Times Brand Equity 'Most
Trusted Brands Survey 2011' for the third consecutive year.

21. The plaintiffs have tied up with Indian Oil Corporation
Ltd., a commercial enterprise in India and one of Indian
Fortune 500 global listing, to launch the first co-branded
fuel credit card in India, in September 1997. The Indian Oil
Citibank co-branded cards are one of the biggest successes
in the Indian credit card industry with a base of
approximately 750,000 cards in force. On 16th December,
2002, the plaintiffs extended its tie up with Indian Oil
Corporation to launch the country's first co-branded debit
card which can work as a debit as well as an ATM card
and provides numerous benefits to customers.”

8. So far as the actions of the defendants which are complained by
th
the plaintiffs are concerned, in para 26 of the order dated 24
November, 2014, the learned Single Judge has noted as follows :
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“26. It is the case of the plaintiffs that in and around
January 2013 they came across defendants' website
www.citicorpbiz.com which revealed that the same was
created on 17th May, 2012. The impugned website revealed
that the defendants were not only using the plaintiffs'
registered trade mark CITICORP as a part of their domain
name, but were also using it as a part of their corporate
name CitiCorp Business And Finance Pvt. Ltd. to provide
services such as financial services, broking distributions,
mutual fund and insurance, loan syndication, real estate,
financial education, research and advisory, finance
consulting etc. It was found out that defendant No.1 was
incorporated on 4th September, 1992. Representation of
the impugned marks used by the defendants is as under:
27. On an investigation conducted into the activities of the
defendants to ascertain the extent of use of
CITICORP/CITI by them, it was revealed that the
defendants' were indeed using the mark CITICORP in
relation to taxation and financial services including
services such as processing loans, equity markets, real
estate financing, formation of private limited companies,
direct & indirect taxation, company law, financial portfolio
management, tax consulting, financial structure consulting,
audit and other services related to accounting and
taxation. It was further revealed that defendant No.1 also
has a sister concern namely Citi Enterprises & Traders
Pvt. Ltd., defendant No.2, herein which also deals in
providing financial and taxation services and was
incorporated on 31st October, 2005. Defendant No.1 and 2
have common directors.
28. It is alleged in the plaint that on investigation it was
also revealed that the defendants' use of the mark
CITICORP is limited to only one branch in Kolkata and
allegedly they have been using the mark for the past 15
years. Plaintiffs have stated that they were not aware of
defendants' use of the mark CITICORP until they came
across their website in January 2013. It is the plaintiffs'
belief that the defendants have only recently in and around
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May,2012 (with the creation of the impugned website)
started actively and visibly using the impugned mark
CITICORP and CITI so as to come to the attention of the
plaintiffs.”
(Emphasis supplied)
9. The respondent/plaintiff therefore filed CS(OS) No. 1789/2013
seeking the following prayers :
“A. A decree of permanent injunction be passed thereby
directing that the Defendants, their directors, employees,
agents, distributors, franchisees, representatives and
assigns be restrained from :
(i) Using CITICORP, CitiCorp Business And
Finance Pvt. Ltd., Citi Enterprises & Traders Pvt.
Ltd., CITI and/or any other mark which is
confusingly or deceptively similar to the plaintiffs
trade mark CITI and/or CITICORP either as, a trade
mark or part of a trade mark, a trade mark or
corporate name or as part of a trade or corporate
name, domain name or part of a domain name, or in
any other manner whatsoever so as to infringe the
registered trade marks of the plaintiffs or pass off its
business as that of the plaintiffs.
(ii) Disposing of or dealing with their assets,
including the properties mentioned in the cause title
of the plaint, in a manner which may adversely affect
the plaintiffs’ ability to recover damages, costs or
other pecuniary remedies that may be finally
awarded to the plaintiffs;
B. The defendants, its directors, employees, agents,
distributors, franchisees, representatives and assigns be
directed by a decree of mandatory injunction to :
(i) To transfer the domain names
www.citicorpbiz.com
and/or any other domain name
which is similar to the plaintiffs’ registered trade
marks CITI and/or CITICORP and/or CITI family of
marks to the plaintiffs; and
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(ii) To make a full and fair disclosure of any other
domain name incorporating the plaintiffs’ registered
trade marks CITI and/or CITICORP and/or CITI
family of marks or any other mark deceptively and
confusingly similar to the plaintiffs’ registered
trademarks and transfer the same to the plaintiffs
and/or delete the said domain names.
(iii) Recall all the marketing, promotional and
advertising materials bearing the mark CITI and/or
CITICORP and/or any other trademark deceptively
or confusingly similar to the plaintiffs’ registered
trademarks CITI and/or CITICORP and/or CITI
family of marks and hand over the same to the
attorneys or representatives of the plaintiffs.
(iii) To make a full and fair disclosure of any other
trademark application(s) filed for registration by
them in or outside of India which is similar to the
plaintiffs’ registered trade marks CITI and/or
CITICORP and/or CITI family of marks and/or any
other mark which is deceptively and confusingly
similar to the plaintiffs’ registered trademark.
C. The defendants be ordered to disclosure on oath
details of all or any use of CITI and/or CITICORP and/or
CITI family of marks either as a trade or corporate name,
part of trade or corporate name, a trade mark or part of a
trademark, or as a domain name or part of a domain name
or in any other manner whatsoever.
D. The defendants be called upon to allow inspection of
their accounts to assist in ascertaining profits made by the
defendants by its unauthorised use of the trademarks CITI
and CITICORP and a decree be accordingly passed in
favour of the plaintiffs’ for the amount found due;
E. Costs of the suit be awarded to the plaintiffs.”

10. Alongwith the plaint, the plaintiff filed IA No. 14886/2013
under Order 39 of the Code of Civil Procedure. On this application,
rd
an ex parte interim injunction order dated 23 September, 2013
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against the appellants came to be passed by the learned Single Judge,
prohibiting the appellants from using the trademark of the plaintiffs
“CITI” and/or “CITICORP” and/or CITI family or any other mark
which is deceptively or confusingly similar to the plaintiffs’ registered
th
trademark. This injunction was confirmed by an order dated 24
November, 2014. On the same date, the learned Single Judge granted
six months time to the appellants/defendants to change their corporate
name from Citi Corp to some other name.
11. In the order, the learned Single Judge has noted the only stand
taken by the defendants in their written statement in para 35 of the
order which reads as follows :
“35. In the written statement the defendants have mainly
taken the defence that the present suit is not maintainable
as this Court has no jurisdiction to entertain the present
suit. It is contended that the suit is barred by limitation and
is filed by the plaintiffs only to harass the defendants. The
plaint discloses no cause of action. It is stated that
defendants, Private Limited companies incorporated, under
the Companies Act, in Kolkata, are into the business of all
sorts of financial consultancy since the year 1994.
It is contended that while the business of the
plaintiffs' is mostly outside India, the defendants' business
is situated within Kolkata only. Moreover the address of
the plaintiffs in the plaint is that of New York, USA and
defendants are based in Kolkata so the present Court has
no jurisdiction”
(Emphasis by us)
12. It appears that in the written statement, the defendant has set up
a plea of having registered a domain name as well. This fact was
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considered by the learned Single Judge in para 36 of the order dated
th
24 November, 2014 in the following terms :
“36. It is alleged in the written statement that the
defendants' domain name www.citicorpbiz.com is a valid
domain name obtained legally by the defendants which is
renewed upto 17th May, 2015. However after receipt of the
ex-parte order dated, the defendants have not used the said
domain name.
It has been contended that defendants have not used
any trademark of the plaintiffs as their trademark. They
have only used the domain name www.citicorpbiz.com
since the very inception i.e. 17th May, 2012, which is not
similar to plaintiffs' trade mark CITICORP. The defendants
have not infringed the trademark CITICORP of the
plaintiffs. Neither do they pass off their services or business
as that of the plaintiffs' nor have they adopted any unfair
competition against the plaintiffs as alleged. The other
averments made in the plaint by the plaintiffs are simply
denied by the defendants.”

13. After a detailed consideration of the entire law on infringement,
the court has also recorded a prima facie finding that the defendants
were guilty of infringement of the registered trademark of the
respondent/plaintiffs; holding that balance of convenience was in
favour of the plaintiffs/respondents and that non-confirming of the
earlier order of injunction would cause irreparable loss and injury to
the plaintiffs. As a result, the following directions were made by the
learned Single Judge :
“64. ……..Thus, I.A. 14886/2013 under Order 39 Rule 1
and 2 read with Section 151 CPC is allowed. Interim order
dated is confirmed. However, considering the facts and
FAO(OS)No.43/2018 Page 10 of 14



circumstances of the case and since the defendants are
using the trade mark "CITICORP" for the last many years,
the defendants are granted six months' time to change the
name/trade mark "CITICORP" to some other trade
mark/mark which may not be either identical with or
deceptively similar to the plaintiffs' trade mark
"CITICORP/CITI".
65. However, the defendants are granted six months time to
change their corporate name from CITICORP to some
other name which may not be either identical with or
deceptively similar to any of the plaintiffs' trade marks.”


14. We may note that the plaintiffs/respondents had filed an
application under Order 39 Rule 2A of the CPC being IA No.
rd
6545/2014 complaining violation of the interim order dated 23
September, 2013. This application was disposed of also by the order
th
dated 24 November, 2014 with the direction that the
appellants/defendants shall strictly obey the interim order passed, as a
last opportunity. In case of further violation, the respondent was
granted liberty to revive this application.
15. As the appellants/defendants failed to comply with this order,
the proceedings in IA No. 6545/2014 were revived. The appellants
still failed to comply with the interim order and continued to infringe
the rights of the respondents in their registered trademark.
16. This order of the ld. Single Judge has been assailed by way of
the present appeal. As this appeal was filed way beyond the period of
limitation, the appellants have filed CM No. 9697/2018 praying for
condonation of the delay of 1140 days in filing the appeal. The
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ground for condonation of delay is the very ground which was set up
th
before the learned Single Judge on 9 January, 2018 to the effect that
the appellants/defendants were not aware of the proceedings in the
suit. This plea has been disbelieved by the learned Single Judge on
the ground that appellants were changing counsels. Obviously, they
were aware of the proceedings in the suit and were duly instructing
counsels.
17. Mr. Karan Bajaj, learned counsel for the respondent has handed
over documents which are taken on record. Copies have been given to
learned counsel for the appellant.
th
18. He has placed before us an affidavit dated 20 February, 2018
filed by Dinesh Kumar Patnai in CS(OS) (Comm) No. 416/2018
wherein he has deposed as follows :
“1. That I am the Director of the Defendants’ company
and competent and authorize to swear this affidavit on
behalf of the company.
2. That pursuant to the order dated 23.09.2013, the
website of citicorpbiz.com has been blocked w.e.f.May 5th,
2014 and the business and trading in the name of
Defendants’ company has not been carried out pursuant to
the order dated 24.09.2014.”
(Emphasis by us)

19. This very statement was repeated by Mr. Dinesh Kumar Patnai
th th rd
in his affidavits dated 13 March, 2018; 14 March, 2018; 3 April,
th
2018 and 4 April, 2018. Clearly, Mr. Dinesh Kumar Patnai, Director
of the company was aware of the orders passed by the court when he
th
claims to have blocked the website on 5 May, 2014. Additionally,
FAO(OS)No.43/2018 Page 12 of 14



Mr. Patnia has claimed that he has not carried out business and trade
th
in the offending names since the order dated 24 November, 2014.
20. It is well settled that the courts would liberally consider prayers
for condonation of delay. However, in the instant case, the present
appeal has been filed after repeated assurances to the learned Single
Judge that the orders impugned would be complied with. The appeal
is not maintainable for this reason also.
21. Most importantly, the appellant has set up completely false
pleas in the application seeking condonation of delay attempting to
assert ignorance with regard to the court proceedings, a fact falsified
by his affidavits on record. Therefore, the present case is one wherein
no cause has been shown, let alone sufficient cause, for condonation
of delay.
22. CM No.9697/2018, the application for condonation of delay is
therefore completely devoid of any factual and legal merit and has to
be rejected.
23. This application for condonation of delay is dismissed.
FAO(OS) 43/2018 & CM No. 9696/2018 (for stay)
The prayer for condonation of delay has been dismissed. As a
result, this appeal must fail.

FAO(OS)No.43/2018 Page 13 of 14



This appeal is dismissed. In view of the dismissal of the appeal,
the application for stay is also dismissed.


ACTING CHIEF JUSTICE



C.HARI SHANKAR, J
JULY 17, 2018/ kr


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