TMI Blog2013 (12) TMI 116X X X X Extracts X X X X X X X X Extracts X X X X ..... are operating in the same sphere of activity i.e of financial services - A printout of the defendant’s website reveals that the defendants offer financial and investment services which are identical to the services for which the plaintiffs’ marks are registered - 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. Punitive damages are founded on the philosophy of corrective justice - the purpose involved is to discourage parties from indulging in acts of deception - The Plaintiffs are also entitled to the damages of Rs 5 lakhs in addition to costs of the suit – Decided in favour of Petitioner. - CS (OS) 1681/2011 & I.A No. 10932/2011 - - - Dated:- 19-11-2013 - Vipin Sanghi,JJ. For the Petitioner : Ms. Ekta Sarin and Ms. Ankita Ubeja, Advocates For the Respondent : Through JUDGMENT Vipin Sanghi, J. 1. This suit for grant of mandatory and permanent injunction restraining infringement of registered trademark, passing off and delivery up h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... intiff s revenues for the year 1990-2009 are as follows YEAR REVENUE (Million in US Dollar) 1990 24,322 1991 25,763 1992 14,255 1993 13,254 1994 14,282 1995 15,841 1996 16,237 1997 17,760 1998 19,132 1999 21,278 2000 23,675 2001 22,582 2002 23,807 2003 25,866 2004 29,115 2005 24,267 2006 27,136 2007 27,731 2008 28,365 2009 24,523 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 relat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , 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 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 in both the 30th 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 Plaint ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... defendants is reproduced below: 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 cou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nc 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 reg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sscard.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, mu ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... her 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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