Full Judgment Text
$~ 26
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 2476/2013
th
% Date of decision : 08 September, 2014
BHARTI AIRTEL LTD ..... Plaintiff
Through: Mr.Sudeep Chatterjee and
Ms.Deepthi Alexander, Advocates
versus
AIRTELASIA & ORS ..... Defendant
Through
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (ORAL)
1. Present suit has been filed by the plaintiff for permanent injunction
restraining violation and infringement of rights in the Trade Mark/Trade
Name/Logo/Label „AIRTEL‟, Trade dress, Domain Name, Passing Off
and Dilution, Damages/Rendition of Accounts and Delivery up.
2. Summons in the suit and notice in the application were issued on
11.12.2013 and 21.05.2014. Affidavit of service has been filed to show
that the Defendants have been served. Despite service, none has chosen to
appear on behalf of the Defendants. Accordingly, the Defendants are
proceeded ex parte.
3. Counsel for the plaintiff submits that the plaint is duly supported by the
affidavit of Mr P L Lamba, Vice President (Legal), the affidavit to be
treated as an affidavit by way of evidence. As per the plaint, the Plaintiff
Company is one of the biggest telecom companies engaged in a variety of
services including cellular phones, broadband and internet services,
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satellite, carrier, international services, calling cards, e-business services,
etc. Its flagship brand and mark is the AIRTEL mark which is now a
globally well-known name and mark. It is also stated in the plaint that the
Plaintiff Company was previously incorporated as Bharti Tele-Ventures
Limited and thereafter in the year 2006, the name of the company was
changed to Bharti Airtel Limited. Copy of the Fresh Certificate of
Incorporation consequent upon change of name has been filed along with
the plaint.
4. It has been averred in the plaint that the Plaintiff Company is the fourth
largest mobile operator in the world in terms of subscriber base and is one
of the leading private sector providers of telecommunication services
having an aggregate of over 269 million customers as on March 31, 2013,
consisting of GSM mobile and broadband & telephone customers with
operations in 20 countries across Asia and Africa.
5. It has next been averred in the plaint that the Plaintiff Company in the
year 2009 had also launched an international call back services under the
brand AIRTEL WORLD SIM which allowed users to receive incoming
calls on their India Airtel number and save up to 85% and further users
can easily make outgoing calls across the world and in the country they
are in at a fraction of international calling rates and it can be used across
more than 150 countries.
6. Plaint also discloses that the word “ AIRTEL” has been inseparable and
essential part of the Plaintiff Company and from the date of inception to
as on date, the said mark has been used uninterruptedly and continuously,
by the Plaintiff Company and has come to be exclusively associated with
the Plaintiff Company alone.
7. It has been averred in the plaint that in the year 1994 the Plaintiff
Company conceived, invented, coined and adopted the distinctive mark
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AIRTEL as its trademark for its goods as well as services. It has further
been averred that the word AIRTEL is not used in common language and
does not find any place in any dictionary. It is a coined word and is
therefore, entitled to a very high degree of protection.
8. It has next been averred in the plaint that the Plaintiff Company is the
registered owner, user and proprietor of the trade mark AIRTEL in India
as well as in several countries abroad and renders telecommunication and
other services under this brand/mark/logo. Further the Plaintiff Company
had introduced a new logo in September 2010 marking the Plaintiff
Company‟s 200 million customer milestone. Copies of the trademark
registration certificates for the mark AIRTEL and/or its derivatives that
stands registered in India in favour of the Plaintiff Company and the
trademark „AIRTEL‟ registrations internationally have been filed along
with the plaint. It is stated in the plaint that the plaintiff Company has also
filed the trademark applications in India which are pending registrations
and copies of the pending applications have also been filed along with the
plaint.
9. It has also been averred in the plaint that the mark/brand name/logo
“ AIRTEL” form an extremely important and prominent part of the
identity of the Plaintiff Company as well as its Group Companies as the
mark/name/logo “ AIRTEL ” is not only used for their trading style but the
said word forms an inalienable part of the Group‟s identification itself.
10. It has next been averred in the plaint that the Plaintiff Company is also the
owner of various AIRTEL domain names including airtel.com, airtel.in,
airteldigitaldish.com, airtelmoney.com, airtelmoney.net, airtelmoney.org,
airtelmoney.in, airtelworld.in, airtelworld.com, airtelindia.com,
airtel.co.in, airtellive.com, airtel-broadband.com, airtel.in, airtel3.com,
airtelthree.com, airtelthree.in, airtellive.in, airtel-broadband.com, airtel-
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boradband.in, airtelenterprise.in, airtelindia.in,
airtellongdistance.in,airtellongdistance.com, airteltelephone.com,
airteltelephone.in. Printouts of some of the domains have been filed along
with the plaint.
11. Further as per the plaint, the Plaintiff Company widely publicizes and
advertises its products/services in print as well as electronic media all
over the country and the sales and marketing expenditure runs into
millions of dollars every year. Sample copies of the media coverage/press
clippings, publicity material for the mark AIRTEL in the print media have
been filed along with the plaint.
12. It has also been averred in the plaint that by virtue of extensive use and
vast publicity under the trade mark “AIRTEL”, the Plaintiff Company
enjoys exclusive proprietary rights therein and members of the trade and
relevant purchasing public identify and associate the said trademark with
Plaintiff‟s Company products and business alone.
13. It has further been averred in the plaint that by virtue of long and
continuous use, the Plaintiff Company‟s mark/brand/logo “ AIRTEL ”
have acquired the status of a well known mark within the meaning of
section 2 (zg), 11(6), 11(7), 11(8) and 11(9) of the Trade Marks Act, 1999
in as much as a mere mention of the word “ AIRTEL ” in relation to
various goods and services being offered under it directly gets related to
the Plaintiff Company and has been duly protected by various judicial
courts.
14. Further, as per the plaint, the mark is inherently distinctive and through
extensive use, marketing and advertising of the said trademark by the
Plaintiff Company all over India as well as abroad and due to protection
by Courts etc., the said mark has become a “WELL KNOWN
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TRADEMARK” and the adoption of the same by any third party
necessarily causes confusion in the minds of the public.
15. It has also been averred in the plaint that the rights of the Plaintiff
Company in the mark/brand/logo “ AIRTEL ” as such have been
recognized by courts/ tribunals not only in India but also in different
jurisdictions including WIPO. Copies of orders in favour of plaintiff in
multiple judicial proceedings have been filed along with the plaint.
16. It has further been averred in the plaint that the Defendant No.1 appears to
be engaged in providing services relating to telecommunication services
including mobile international calling cards as per its website and is also
the registrant of the domain www.airtelasia.com . The Defendant No.2 is
the registrar of the domain name www.airtelasia.com and the Defendant
No.3 is the registration service provider of the domain name
www.airtelasia.com .
17. It has next been averred that the Defendant No.1 who is providing
international calling card services has not only copied the registered and
well-known mark of the Plaintiff Company but has also copied the entire
concept of the Plaintiff Company in its calling card services. Further it has
been averred that the Defendant No.1 is using the domain name
www.airtelasia.com . The Defendant no.2 herein is operating under the
ICANN and all registrants of the domain names facilitated by this
Registrar are bound by the Uniform Domain Names Disputes Resolution
Policy (UDRP).
18. Plaint also discloses that the Defendant No.1 has copied all the essential
elements of the Plaintiff Company‟s mark, writing style, get-up, thereby
violating with impunity the rights of the Plaintiff Company. It has been
averred that the Defendant No.1 has copied the entire registered and well-
known mark AIRTEL of the Plaintiff Company and has merely added a
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suffix ASIA to deceive the customers and innocent people. The
representations of both the marks is given below which clearly establishes
the fraudulent conduct and malafide of the Defendants:
PLAINTIFF COMPANY’S
DEFENDANT NO.1 LOGO
LOGO
19. It has also been averred in the plaint that the comparative look at the two
marks would reveal that the Defendant‟s mark is a slavish imitation of the
Plaintiff Company‟s mark which is so blatant that it is a case of res ipsa
loquitur. Further it has been averred that on a first look, most consumers
believe the Defendant No.1‟s services to be the Plaintiff Company‟s
services and due to the similarities, it is possible that any consumer,
globally, can presume that the services originate from the Plaintiff
Company, especially the telecommunication industry. It has next been
averred that the Plaintiff Company‟s global reputation in
telecommunication and mobile services which is associated with the
mark/name AIRTEL is likely to be misused by the Defendant No.1 and
owing to the nature of the services, class of customers, adoption of a
similar mark with an identical get-up, etc. is bound to create confusion
and deception in the market thereby amounting to passing off.
20. Further as per the plaint, the Defendant No.1 is using the mark AIRTEL
in relation to telecommunication/ mobile services including international
calling cards and a perusal of the Defendants‟ website
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www.airtelasia.com shows that the Defendants are not merely offering
telecommunication services in the form of calling cards etc., but are also
making available downloadable applications to be used on phones etc., for
making calls. It has also been averred in the plaint that the credentials of
the defendant‟s business are extremely suspicious and do not inspire
confidence and the entire business is based on riding piggy-back upon the
reputation and fame of the plaintiff‟s mark AIRTEL which is a globally
renowned mark.
21. It has next been averred that the use of the mark AIRTEL by the
Defendants is in complete violation of the Plaintiff Company‟s right
protected under statute and under common law as the Plaintiff Company
has a global reputation to protect and the mark AIRTEL/ AIRTELASIA if
permitted to be used indiscriminately would be completely diluted. It has
also been averred that the mark AIRTEL enjoys enormous goodwill and
equity especially in the telecommunication industry including mobile
services and are the market leaders in this segment and the Defendant
No.1 has chosen to use the mark AIRTEL/ AIRTELASIA with a view to
encash upon the goodwill and reputation of the Plaintiff Company. The
dishonesty is further established from the fact that the Defendant No.1 has
in fact started using “AIRTEL” per se as is evident from their domain
name registration for their website www.airtelasia.com .
22. It has also been averred in the plaint that the customers are familiar with
the plaintiff Company‟s services owing to the extensive advertisement in
the electronic media, therefore, the attempt by any other service providers
to adopt identical mark and concept of the Plaintiff Company but not
containing the high quality is likely to lead to tarnishment of the image of
the Plaintiff Company leading to severe dilution of the Plaintiff
Company‟s marks and services.
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23. It has further been averred in the plaint that upon seeing the defendant
No.1‟s mark, the first impression of visual impact is that of the plaintiffs
mark and even if one was to ignore the above mentioned similarity, the
overall similarity between the two marks is so close that the consumers
would be lead to believe that the defendant No.1 is another division of the
plaintiff Company.
24. It has next been averred in the plaint that the registration of domain
containing the mark “AIRTEL” by the defendant No.1 violates the
common law as well as statutory rights of the plaintiff Company and on a
bare perusal of the impugned website confusion is inevitable as to their
origin because the domain name used by the defendant No.1 is identical to
the marks of the plaintiff Company. It has also been averred that the
malafide intentions of defendant No. 1 is evident from its act of getting
the domain names registered with the plaintiff Company‟s registered and
well-known mark which clearly establishes that the defendant got the
impugned domain names registered keeping in mind the reputation of the
Plaintiff Company in an attempt to confuse the general public at large into
believing that it is connected with the plaintiff company in some manner.
25. It has also been stated in the plaint that except the plaintiff company, no
third party can either create or alienate/transfer any sort of right in the
mark “AIRTEL” and since defendant No. 1 has no rights in the said
marks, it cannot be allowed to use or create any domain name or other
mark or name or trading style containing the mark “AIRTEL”. It has
further been averred that the registration of the domain name
www.airtelasia.com is completely dishonest, illegal and malafide with a
view to make monetary gain out of the plaintiff company‟s brand as the
brand AIRTEL is the most well recognized brands in India and also in
other countries.
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26. Further as per the plaint, the dishonesty and the misuse on part of
Defendant No.1 is irrefutably established from the following factors:
Registration of the domain name with the said mark AIRTEL
without having any connection with any of the Plaintiff Company;
The domain name being identical or confusingly similar to the trade
marks in which the Plaintiff Company has rights;
The said Defendant No.1 having no proprietary or contractual
rights in any registered or common law trademark corresponding in
whole or in part to the disputed domain name.
Using an identical logo;
27. It has also been averred in the plaint that the illegality in the registration
of the disputed domain name arises from the fact that domain names today
are a part and parcel of corporate identity and acts as the address of the
company on the internet and can be termed as a web address or a web
mark just like a trade mark or service mark. It has next been averred that
the mere act of registration by Defendant No. 1 of the disputed domain
names containing the mark AIRTEL in its entirety constitutes passing off
and violation of the Plaintiff Company‟s statutory right in the registered
trademarks and the Defendant No.1‟s conduct results in an Infringement
of the Trademark rights in the registered trade mark/ logo AIRTEL,
Infringement of Copyright in the AIRTEL writing style and acts of unfair
competition, passing off and dilution.
28. I have heard counsel for the plaintiff and perused the documents placed on
record along with plaint duly supported by the affidavit. Trade mark
registration certificates of the trade mark “AIRTEL” and/or its derivatives
in favor of the plaintiff have been filed along with the plaint and list
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showing worldwide registration of trade mark “AIRTEL” has also been
filed. Plaintiff has proved that the plaintiff company is the owner of
various AIRTEL domain names, the list of which has also been filed
along with the plaint. Plaintiff has also relied upon various orders passed
in their favour proving that the rights of the Plaintiff Company in the
mark/brand/logo “ AIRTEL ” have been recognized by courts/ tribunals
not only in India but also in different jurisdictions including WIPO.
Furthermore, plaintiff has relied upon the copies of various press
clippings and advertisements which have been filed along with the plaint
to prove the vast scale on which plaintiff has advertised their brand over a
period of years and enormous expenditure incurred by the plaintiff in
advertising/promoting its brand.
29. On the basis of the documents placed on record, the plaintiff has been able
to establish that the Plaintiff Company is one of the biggest telecom
companies engaged in a variety of services including cellular phones,
broadband and internet services, satellite, carrier, international services,
calling cards, e-business services, etc and is the market leader in the
telecommunication segment having unique trade dress, get-up, colour
combination etc. Plaintiff has also been able to establish that the Plaintiff
Company in the year 1994 conceived, invented, coined and adopted the
distinctive mark AIRTEL as its trademark for its goods as well as
services and is the registered owner, prior user and proprietor of the
trademark/brand/logo “ AIRTEL ” in India as well as in several countries
abroad. Further, the plaintiff has also established that the Plaintiff
Company is the owner of the artistic work in the AIRTEL . The said
mark is the original artistic work with unique colour combination, style
and get-up and writing style is distinctive which is an original artistic
work under Section 2(c) of Copyright Act, 1956 and is entitled to the
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highest degree of protection and all rights in the logo belong to the
Plaintiff Company. Plaintiff has further been able to establish that the
Plaintiff Company widely publicizes and advertises its products/services
in print as well as electronic media all over the country and the sales and
marketing expenditure runs into millions of dollars every year due to
which the Plaintiff Company‟s mark/brand/logo “ AIRTEL ” have
acquired the status of a well known mark within the meaning of section 2
(zg), 11(6), 11(7), 11(8) and 11(9) of the Trade Marks Act, 1999.
30. In the case of Tata Sons Ltd v Manoj Dodia and Ors , reported at
2011(46)PTC244(Del), following observations were made by another
bench of this court with respect to the factors that ought to be looked into
while considering what constitutes a “well known mark”:
“13. Trademarks Act, 1999 does not specify the factors
which the Court needs to consider while determining whether
a mark is a well known mark or not, though it does contain
factors which the Registrar has to consider whether a
trademark is a well known mark or not. In determining
whether a trademark is a well known mark or not, the Court
needs to consider a number of factors including (i) the extent
of knowledge of the mark to, and its recognition by the
relevant public; (ii) the duration of the use of the mark; (iii)
the extent of the products and services in relation to which
the mark is being used; (iv) the method, frequency, extent
and duration of advertising and promotion of the mark; (v)
the geographical extent of the trading area in which the mark
is used; (vi) the state of registration of the mark; (vii) the
volume of business of the goods or services sold under that
mark; (viii) the nature and extent of the use of same or
similar mark by other parties; (ix) the extent to which the
rights claimed in the mark have been successfully enforced,
particularly before the Courts of law and trademark registry
and (x) actual or potential number of persons consuming
goods or availing services being sold under that brand.” In
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my view the mark of the plaintiff satisfies all the necessary
ingredients for falling in the category of a well known mark.
30. In the case of Evergreen Sweet House vs. Ever Green and Ors. Reported
at 2008 (38) PTC 325 (Del), it was observed as under:
15. A mark is said to be deceptively similar to another
(Section 2(1) (h), Trademarks Act, 1999) if it so nearly
resembles that other mark as to be likely to deceive or cause
confusion. Section 29(1) deals with a situation where the
Defendant uses a mark, which is identical or deceptively
similar to that of the Plaintiff, in respect of the same goods or
services, and in such a manner that it is likely that such use is
taken as being an use as a trademark. This amounts to
infringement. To fall within section 29(1), the defendant‟s
use of the mark must be so that it is likely that the public
assumes that the said mark is used as a trademark. Section
29(2) deals with three situations; one where the defendants
mark is identical to that of the plaintiff and in respect of
similar goods. Two, where the, marks are similar and in
respect of goods which are identical or similar. Three, the
marks as well as the goods are identical. Infringement does
not take place if only one of the three ingredients are
satisfied; the plaintiff has to prove that use by the defendant
is likely to cause confusion on the part of the public or is
likely to have an association with the registered mark.”
31. In Laxmikant V Patel vs Chetanbhai and Anr , reported at AIR 2002 SC
275, Lordships of Supreme Court have held that a competitor initiating
sale of goods or services in the same name or by imitating the name
results in injury to the business of one who has the property in that name.
The law does not permit any one to carry on his business in such a way as
would persuade the customers or clients in believing that the goods or
services belonging to someone else are his or are associated therewith. It
does not matter whether the latter person does so fraudulently or
otherwise. The reasons are two. Firstly, honesty and fair play are, and
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ought to be, the basic policies in the world of business. Secondly, when a
person adopts or intends to adopt a name in connection with his business
or services which already belongs to someone else it results in confusion
and has propensity of diverting the customers and clients of someone else
to himself and thereby resulting in injury.
32. Having regard to the documents placed on record, I am of the view that
the Defendants, who are engaged in the same line of business as the
plaintiff i.e. mobile services including international calling cards are
carrying on their business under the impugned name “AIRTELASIA”
which is identical and deceptively similar to the plaintiff‟s trade
name/mark “AIRTEL” . Further, the Defendants are well aware of the
reputation of the Plaintiff Company and have chosen to use the mark
AIRTEL/ AIRTELASIA with a view to encash upon the goodwill and
reputation of the Plaintiff Company. Also Defendants by using an
identical mark by adding ASIA to it has blatantly copied all the
substantial features of the Plaintiff Company‟s mark AIRTEL including
writing style, colour scheme, font, style, get-up, etc which amounts to
infringement of the Plaintiff Company‟s proprietary rights under Section
29(1) of the Trade Marks Act, 1999. Thus, the launch of identical/ look-
alike service in an identical/similar substantial imitating mark, identical
get-up, lay-out and colour combination, identical/similar writing styles by
Defendants is a clear case of passing off and complete dilution of the
brand equity which the Plaintiff Company‟s mark enjoys. Furthermore,
adoption of domain name www.airtelasia.com by the defendants is
completely malafide, dishonest and illegal. The domain name adopted by
the defendants, by virtue of being so deceptively similar to that of the
plaintiff, is bound to create confusion in the minds of public with respect
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to its origin and any average internet user would presume that the
defendants are carrying on their business in association with the plaintiff.
33. For the reasons stated above, the plaintiff has made out a case for grant of
decree as prayed in the plaint. Accordingly, the order dated 08.09.2014 is
confirmed and the suit is decreed in favour of the plaintiff and against the
defendant no.1. The domain name shall be transferred on receipt of copy
of the judgment by defendant no.2. Decree sheet be drawn up accordingly
G.S.SISTANI, J
SEPTEMBER 08, 2014
ssn
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