M/S AMERICAN EXPRESS COMPANY & OTHERS vs. M/S AMEX FINANCIAL SERVICES PRIVATE LTD & OTHERS

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Judgment reserved on: 10.10.2013

% Judgment delivered on: 19.11.2013

+ CS(OS) 1681/2011 & I.A No. 10932/2011
M/S AMERICAN EXPRESS COMPANY
& OTHERS ..... Plaintiffs
Through: Ms. Ekta Sarin and Ms. Ankita Ubeja,
Advocates
versus

M/S AMEX FINANCIAL SERVICES PRIVATE LTD
& OTHERS ..... Defendants
Through

CORAM:
HON’BLE MR. JUSTICE VIPIN SANGHI

J U D G M E N T

VIPIN SANGHI, J.
1. This suit for grant of mandatory and permanent injunction restraining
infringement of registered trademark, passing off and delivery up has been
filed by plaintiff no 1 – which is a corporation organized under the laws of
the State of New York , United States of America, Plaintiff no 2 – which is a
group company of Plaintiff No.1 and is incorporated under the Companies
Act,1956 and plaintiff no 3 – which is also a group company of Plaintiff No
1, incorporated under the laws of state of Delaware, United States of
America against Defendant No 1 Company – incorporated under the
Companies Act, 1956 and Defendants No.2 and 3, the directors of
CS(OS) 1681/2011 Page 1 of 16


Defendant no 1 Company, complaining of infringement and passing off of
the Plaintiffs’ registered trademark “AMEX”. The plaintiffs also seek a
decree of rendition of accounts against the defendants and a decree for the
amount found due upon accounts being taken. They further seek a decree of
mandatory injunction to transfer the domain name www.amexgroup.in and
www.americanexpress.in which are allegedly registered in the name of the
defendants and a direction to be issued to the National Internet Exchange of
India to transfer the said domain names in the name of the Plaintiffs.

2. It is the case of the plaintiffs that they – by themselves and their
related companies are a leading global financial services organisation
engaged, inter alia in the business of banking and finance, investment and
insurance, credit and charge card services, travel, foreign exchange and
other services
3. The Plaintiffs commenced the use of the AMERICAN EXPRESS
mark in 1850 – both as a trade mark, as well as a trade name and since then,
the Plaintiffs have expanded the use of the AMERICAN EXPRESS mark to
include a variety of financial services. The plaintiff’s usage in India can be
traced back to the 1950s.
4. It is the case of the Plaintiff that the Plaintiffs and their related
companies have been referred to as AMEX since their very inception and
the trade mark/name AMEX has been coined from the Plaintiffs’ corporate
name “ AM ERICAN EX PRESS”. The Plaintiffs claim they started
worldwide use of the trademark AMEX in 1969, including in India.
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5. It is urged that the plaintiffs have derived vast revenues from the
services provided and products sold under the trademark “AMEX”. Details
of the revenues of the plaintiffs from1996-2009, as well as the extensive
expenditure on marketing, advertisement and promotion incurred for several
decades have been disclosed in the plaint. The plaintiff’s revenues for the
year 1990-2009 are as follows –

CS(OS) 1681/2011 Page 3 of 16

6. The plaintiffs claim that these figures manifest the extent of success
of the plaintiff’s products and services under the mark aforesaid.
7. The Plaintiffs allege that the Defendant no 1, having its principal
place of office in Mumbai, is trading in the name and style of “Amex
Financial Services Private Limited” and is engaged in the business of
financial services which overlaps with plaintiffs businesses. The plaintiffs
submit that the Defendant no 1 is malafidely using the aforesaid trademark
“AMEX” in relation to services that are identical to those covered by the
classification in which plaintiff’s mark “AMEX” is registered, and that the
defendants are taking undue advantage of the plaintiffs’ reputation, success
and popularity.
8. Summons were issued in the suit vide order dated 15.07.2011and an
ex parte ad interim injunction was also granted to the Plaintiffs vide the
same order. Since the service report was awaited, fresh summons in the suit
were again issued on 10.10.2011 and 12.12.2011which were received back
unserved. Meanwhile, an application was moved by the Plaintiffs being I.A
No 14392/2012 for furnishing the fresh address of the Defendants, which
also had the e-mail address of the Defendants. Accordingly, fresh summons
were issued on the fresh addresses vide order dated 08.08.2012 which were
also received back “unserved” with the report that the Defendants had left
the address. Consequently, the Defendants were served by way of
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publication in “The Free Press Journal” (English) and “Nav Shakti” (Hindi)
in the Mumbai Editions. Citations of the same have been filed on record.
9. In spite of service, the defendants failed to appear before this court
and vide order dated 03.10.2013, the defendants were proceeded ex parte.
The Court also decided to proceed under Order 8 Rule 10, CPC since the
defendant did not file a written statement despite service, and the Plaint is
not only duly verified, but is also supported by the affidavit of Dianne K.
Cahill, the Secretary and Principal Officer of Plaintiff no 3.

10. The first submission of learned counsel for the Plaintiffs is that the
Plaintiffs’ earliest registration for the trademark “AMERICAN EXPRESS”
in India dates back to June 1976 in class 16. Learned counsel submits that
the plaintiffs also have valid registrations for the trade mark AMEX and
AMEX formative marks. The registrations of the Plaintiffs are, inter alia, in
classes 35, 36, 39 and 42 which include the marks “AMEXBANK” and
“AMEXSELECTS”. Learned counsel submits that internationally, the
Trade mark AMEX is registered in over twenty jurisdictions of the world,
the oldest dating back to the year 1970 in Greece.
11. Learned counsel for the plaintiffs submits that in addition to the
aforesaid trademarks, the plaintiffs also own several domain names such as
“amexfinancial.com”, “amexfinancialadvisors.com”, “amexbank.org”,
“amexbankcredit.com”, “amexbiz.com”, “amexcard.com”,
“amexcenturion.com” etc comprising the trademark and trade name AMEX.
12. Learned counsel submits that the plaintiffs have spent large sums of
money in advertising and promoting their services and products in India and
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that the plaintiffs and its subsidiaries have been referred to as AMEX
extensively in the international as well as Indian media. Learned counsel
submits that even the Reserve Bank of India has, on many occasions,
referred to the Plaintiffs as AMEX and the aforesaid establishes the fact that
there exists widespread recognition of the exclusive association of the mark
AMEX with the plaintiffs.
13. Learned counsel submits that the Plaintiffs trademark AMEX is listed
th
in both the 30 edition of Acronyms, Initialisms and Abbreviations
dictionary and the Internet search finder <acronymfinder.com>. Learned
counsel submits that furthermore, a search of worldwide news articles on the
Westlaw database reveals that there are over 5700 references to
AMERICAN EXPRESS and AMEX within the same paragraph which
further establishes that AMEX is a commonly used acronym to refer to the
services of the plaintiffs.
14. Learned Counsel for the Plaintiffs submits that the plaintiffs have
been actively protecting their exclusive right in the trade mark AMEX and
have successfully initiated legal action against third parties wherein the
Plaintiffs have been successfully granted ad interim ex parte injunctions.
Learned counsel submits that likewise, international arbitration forums such
as National Arbitration Forum have held the Plaintiffs trade/service mark
AMERICAN EXPRESS as well as AMEX to be a well known trademark.
15. Learned counsel for the plaintiffs submits that the plaintiffs became
aware of the existence of the defendant no 1 company in 2009 and in an
effort to resolve the issue amicably, the plaintiffs sent legal notice dated
CS(OS) 1681/2011 Page 6 of 16


02.04.2009 directing the defendants to cease use of the plaintiffs registered
trademark and trade name AMEX. It is submitted that as no response was
received to the aforesaid legal notice, the plaintiffs sent a reminder letter
dated 04.05.2009 to which also no response was received.
16. The plaintiffs have also placed on record the action initiated by them
against the defendant no 1 company under Section 22 of the Companies Act,
1956 for removal of the defendant no 1 company name from the Register of
Companies, on the grounds that the company name of defendant no 1 was in
violation of the plaintiff’s registered trademark AMEX. However, the same
was disallowed vide order dated 10.08.2010 – observing that the name of the
defendant no 1 did not have near resemblance with the trademark AMEX, as
the name of the defendant no 1 comprised two words in addition to AMEX,
being, “Financial” and “Services”. The aforesaid order by the Registrar of
Companies (ROC) also observed that there are separate competent
authorities under the Trademarks Act, 1999 to deal with the plaintiffs
allegations of infringement of its mark AMEX.
17. The plaintiffs claim that the defendant no 1 company had applied for
registration of the trademark “AMEX” in class 36, which application now
stands abandoned as per the records of the Trade Marks Registry. It is
submitted that a perusal of the first examination report issued by the Trade
Marks Registry to the defendants reveals that the only objection raised
against the defendant’s application for registration was the Plaintiffs’ prior
registration and application for the marks AMEX and AMEXSELECTS. A
visual representation of the mark as applied for by the defendants is
reproduced below:
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18. In addition, the plaintiffs claim that the defendants made an online
posting on www.timesjobs.com inviting people to post their resumes for
prospective careers with defendant no 1 company. The website on
www.timesjobs.com indicates the various other group companies of
Defendant no 1 which use AMEX as a part of its trading name- such as
AMEX capital, AMEX Co-Op Credit Society Ltd, AMEX Properties and
Investments, AMEX Security and Hospital Services, AMEX Travels,
AMEX Education and AMEX Info services.

19. However, it is averred that a search conducted of the said entities with
the Registrar of Companies did not disclose the existence of any such
entities. Learned counsel for plaintiffs submits that it is evident that the
defendants are connected with these entities, and are using or proposing to
use the mark AMEX in relation to a variety of services.
20. Learned Counsel for the plaintiffs submits that the defendants have
been actively recruiting staff by projecting itself in various institutions in
Delhi and other parts of India as being part of the AMEX group, i.e. the
plaintiffs group, by causing confusion and deception.
21. Learned counsel for the plaintiffs submit that in May 2011, the
plaintiffs came across the icon “VISIT US” posted by the defendants on
www.timesjobs.com, which link was directing visitors to the website
www.amexgroup.in . It is submitted that the website www.amexgroup.in is
CS(OS) 1681/2011 Page 8 of 16


not active anymore and only displays sponsored links, some of which belong
to the Plaintiffs. Learned counsel for the plaintiffs submits that the domain
name www.amexgroup.in is under the control of the defendants, and the
plaintiffs have reasonable apprehension to believe that the domain name
www.americanexpress.in is also under the control of the defendants, as the
domain name www.americanexpress.in was previously registered in the
name of a third party but had been transferred and the registrant of the
aforesaid domain name is the same person whose details are given as
registrant of www.amexgroup.in which is under the defendant’s control.
22. Learned counsel for the Plaintiffs submits that the defendant’s
adoption and unauthorized use of the impugned trade name/mark/ domain
name constitutes passing off and infringement of the plaintiffs’ trademarks
and amounts to acts of unfair competition. It is submitted that the business
of the defendants is identical to the services offered by the plaintiffs and the
use of the impugned mark by the defendants in respect of identical services
is nothing but an attempt by the defendants to pass off their services as those
of the plaintiffs and take undue advantage of the plaintiffs immense
reputation, popularity and its status as a well known trademark. Learned
counsel submits that the defendants use of the impugned trade mark/
name/domain name is fraudulent and has already led to confusion and
deception amongst members of the public and the trade, who associate the
marks AMERICAN EXPRESS and AMEX exclusively with the services
offered by the plaintiffs.
23. Learned counsel for the plaintiffs further submits that the defendants
are violating the plaintiff’s statutory rights as only the Plaintiffs have the
CS(OS) 1681/2011 Page 9 of 16


exclusive right to use the registered trade mark AMEX, AMEX formative
marks and/or AMERICAN EXPRESS in relation to the goods and services
for which the said marks are registered. In this background, the plaintiffs
have filed the present suit seeking the reliefs already mentioned
hereinabove.
24. The plaintiffs rely on the decision in Agilent Technologies, Inc &
Ors. Vs. Agilent Construction Pvt. Ltd in CS (OS) 227/2013 dated
06.03.2013 to submit that in such like suits – where the defendants put in no
appearance and do not even file a written statement, the Courts can dispose
of the suit on the basis of the affidavit accompanying the plaint and the
documents filed therewith.
25. Since, no written statements have been filed on behalf of the
defendants and no reply was given to the cease and desist notice dated
02.04.2009 issued on behalf of Plaintiff no 1 to the defendant no 1, the
averments of the plaintiff and the documents filed by them are
uncontroverted and therefore, there is no reason not to accept the same. The
plaintiffs have filed a host of documents to establish their case. Some of the
documents which are considered relevant shall be referred to herein after.
26. A perusal of the list of worldwide trade mark registrations of the
Plaintiffs shows that the Plaintiffs claim that the mark AMEXCO was first
registered in Greece in 1969. Subsequently, the mark AMEX was registered
in India in various classes from 1976 onwards. The plaintiffs have placed
on record copy of the registration dated 05.05.1976 in class 16 and the
registration dated 02.12.2003 in class 36. Class 36 pertains to “financial
CS(OS) 1681/2011 Page 10 of 16


and financially related services, namely, providing charge card, credit card,
debit card, stored-value card and smart card services; electronic funds and
currency transfer services; electronic payments services, namely, electronic
processing and transmission of bill payment; cash disbursements services;
transaction authorization and settlement services; travelers check services;
money order services; international banking services; military banking
services; foreign remittance services; electronic funds transfer services;
computerized credit card verification; electronic cash transactions;
electronic payment services in the nature of electronic processing and
transmission of payment data: computerized credit authorization; providing
an interactive website featuring financial services information; investment
banking services; mutual fund investment services; financial planning and
financial management services; financial analysis and consultation;
financial portfolio management; financial research; investment brokerage
services; investment consultation; life, health, accident, travel and purchase
protection insurance underwriting services; financial risk management
services.” The said certificate also pertains to classes 35,39 and 42.
27. The plaintiffs have also filed on record registration dated 28.09.1978
in class 16 for the mark AMEXBANK and registration dated 21.07.2005 in
class 36 for the mark AMEXSELECTS. The plaintiffs have also filed on
record trademark registration certificates for the mark AMEX in
international jurisdictions such as South Africa and Australia. The trademark
registration in South Africa is of the year 1988 in classes 9, 16, 36 and 39.
The trademark registration in Australia is of the year 2006 pertaining to
classes 36,39 and 43 and of the year 2001 pertaining to class 36. The
CS(OS) 1681/2011 Page 11 of 16


plaintiffs have also placed on record a tabulated list of over hundred of their
domain names containing the word AMEX in various countries all over the
world. Some of the plaintiffs’ domain names worldwide are amex-iberia-
latinamerica.com, amex-network.com, amex.ca in Canada, amex.at in
Austria, amex.hk.cn in China, amex.com.co in Columbia, amex.co.nz in
New Zealand, amex.com.sg in Singapore, amex.co.th in Thailand, amex-
creditcard.info, amex-credit.com, americanexpress.com,
americanexpresscard.com besides amex.co.in in India.

28. The purpose behind listing out some of the plaintiffs’ several domain
names is to show the extent of the plaintiffs reach over the internet. Keeping
in view that the plaintiffs have in excess of a hundred domain names
worldwide, it is evident that the use of the impugned domain name
www.amexgroup.in by the defendants is likely to cause confusion among
consumers and members of the trade. In this regard, it is relevant to take
note of the observations of this Court in Yahoo! Inc Vs. Akash Arora &
Anr, 78 (1999) DLT 285, wherein the Court observed –
“10. …..In this case also both the plaintiff and the defendants
have common field of activity. They are operating on the Web
site and providing information almost similar in nature. In
Card service International Inc. Vs. McGee; reported in 42
USPQ 2d 1850, it was held that the domain name serve same
function as the trademark and is not a mere address or like
finding number on the Internet and, Therefore, it is entitled to
equal protection as trademark. It was further held that a
domain name is more than a mere Internet address for it also
identifies the Internet site to those who reach it, much like a
person's name identifies a particular person or more relevant to
trade mark disputes, a company's name identifies a specific
company. Accordingly, the Court granted the injunction upon
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consideration of the relevant law namely, Section 32 of the
Lanham Act. In the facts of the said case it was held that
Cardservice International's customers who wish to take
advantage of its Internet services, but do not know its domain
name are likely to assume that "cardservice.com" belongs to
Cardservice International. It goes on to hold that these
customers would instead reach McGee and see a home page for
"Card Service" and thereby many would assume that they have
reached Cardservice International.”
( Emphasis Supplied )
29. The plaintiffs have also filed extensive media coverage of its services
running into over hundred pages wherein the plaintiffs have been referred to
as AMEX.
30. It appears that the plaintiffs have been vigilant about protecting and
defending their intellectual property rights, as they have placed on record the
proceedings in the various other suits filed by the plaintiffs wherein the
Courts, as well as arbitration forums, have protected the rights of the
plaintiffs. Pertinently, this Court vide order dated 15.07.2011 observed that
the observations of the ROC dismissing the plaintiffs’ challenge to the name
of defendant no 1 company were wholly misconceived and in the teeth of
the law laid down in Montari Overseas Ltd. Vs. Montari Industries Ltd.,
1996 PTC (16) 142.
31. In General Electric Company Vs. Mr. J. Singh & Ors., 2011 II AD
(Delhi) 18, the Court observed –
“ In the case before this Court, the mark of the plaintiff GE
(monogram) irrespective of the form in which it is written and
the circle in which the letters are enclosed, will be pronounced
as GE. The mark used/proposed to be used by the defendant
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being GE, there is absolute phonetically similarity between the
two marks. It can therefore hardly be disputed that the mark
GE used/proposed to be used by the defendants is similar to the
mark GE (monogram) of the plaintiff. If a person goes to the
mark seeking to buy a product of the plaintiff company he
would ask for the product of GE and if a product bearing the
trademark GE, in plain letters of English alphabets is offered to
him, he is likely to take it as a product of the plaintiff company
irrespective of the fact that neither the letters GE are written in
a stylized form in which the letters in the trademark GE
(monogram) of the plaintiff nor are they enclosed in a circle. To
him what matters are the letters GE.”
(Emphasis Supplied)
32. In EasyGroup IP Licensing Ltd & Anr. Vs. EasyJet Aviation
Services Pvt Ltd & Anr., 2013(55)PTC 485 (Del), the plaintiffs had filed a
suit for infringement of its trademark “easyJet” against the defendants who
were using the impugned mark “EasyJet” in relation to travel services that
were identical to the services for which the plaintiff’s mark was registered.
This Court on a perusal of the evidence led by the plaintiff therein observed
–
“ 34…. The services provided by the plaintiff no 2 and
defendants are identical in nature. Therefore, the likelihood of
confusion and deception is strong on account of the public at
large associating the defendants services to be those offered by
the plaintiff no 2. The acts of the defendants in using the
impugned trademark coupled with a lack of plausible
explanation offered by the defendants for the same, leads to the
conclusion that the defendants are in fact passing off their
services as those of the plaintiffs in an attempt to cash in on the
plaintiff’s reputation worldwide as well as in India.”
(Emphasis Supplied)
CS(OS) 1681/2011 Page 14 of 16


33. In the present case too the Plaintiffs and the Defendants are operating
in the same sphere of activity i.e of financial services. A printout of the
defendant’s website filed on record reveals that the defendants offer
financial and investment services which are identical to the services for
which the plaintiffs’ marks are registered under Class 36.
34. Although Section 29(3) of the Act presumes that infringement is
likely to cause confusion in the minds of the public, a screenshot of the
website www.gimri.in filed by the plaintiffs shows that the defendants –
who were recruiting staff from Global Institute of Management and research
(gimri), were infact mistaken to be the plaintiffs as the aforesaid website
lists the name of the plaintiffs as one of its recruiters thereby causing actual
confusion. Furthermore, it is also pertinent to note that no explanation by
the defendants has been forthcoming in respect of why they have adopted
the impugned mark.
35. Under the aforesaid circumstances, the plaintiffs have successfully
been able to establish that the defendants are violating the statutory rights of
the plaintiffs’ registered trademark under Section 29 of the Act and are also
passing off their services as those of the plaintiffs causing deception and
confusion.
36. In Hero Honda Motors Lts. Vs Shree Assuramji Scooters , 125
(2005) DLT 504, while discussing the aspect of damages to be granted in a
suit for infringement, the Court while relying upon the judgment in Time
Incorporated vs. Lokesh Srivastava & Anr ., 116 (2005) DLT 599, observed
that punitive damages are founded on the philosophy of corrective justice
CS(OS) 1681/2011 Page 15 of 16


and that there is a larger purpose involved to discourage such parties from
indulging in such acts of deception and, thus, even if the same has a punitive
element, it must be granted.
37. Accordingly, the suit is decreed in favour of the plaintiffs to the extent
of prayers A and C made therein. The Plaintiffs are also entitled to the
damages of Rs 5 lakhs in addition to costs of the suit to be borne by the
defendants.

(VIPIN SANGHI)
JUDGE
NOVEMBER 19, 2013

CS(OS) 1681/2011 Page 16 of 16