In the case of Tata Sons Private Limited & Anr. v. Mohan Kumar Kotana, the Delhi High Court granted a decree of permanent injunction in favor of Tata Sons, restraining the defendant from using trademarks and trade dress deceptively similar to Tata’s “TATA COPPER+ WATER.”
Tata’s Case
The plaintiffs, Tata, sought relief on the grounds of infringement of their trademark, copyright, and passing off, among other claims. The plaintiffs argued that the defendant’s use of the mark and trade dress “Vizag Gold’s COPPER+ WATER” closely resembled their registered mark and product packaging, creating confusion.
Prior Ex-parte Injunction
An ex-parte ad interim injunction was passed earlier on January 31, 2024, restraining the defendant from manufacturing, selling, or distributing the infringing product. Also, a Local Commissioner’s report confirmed the presence of infringing goods at the defendant’s premises.
Defendant’s Stand
The defendant agreed to stop using the trademark and trade dress. . On May 1, 2024, the defendant’s counsel appeared and confirmed that the defendant had already ceased using the disputed label and trade dress.
The Court’s Order
The court made the interim injunction permanent, observing that the defendant, being a first-time infringer, had not contested the case and had voluntarily changed the trade dress after the suit was filed.
Additionally, the court noted that the defendant was a small-time businessperson and therefore awarded only nominal costs of ₹1,00,000 to be paid to the plaintiffs. It further directed the destruction of the infringing goods in the presence of the plaintiffs’ representatives. Additionally, the plaintiffs were granted a certificate for the refund of court fees, and the suit was disposed of accordingly.
Damages Principles
Relevant paras from the case that discuss damages and costs-related principles read as follows:
“12. In the case of *Koninlijke Philips N.V. and Another vs. Amazestore and Others*, 2019 SCC OnLine Del 8198, this Court has held as under:
‘xxx xxx xxx
41. Keeping in view the aforesaid, this Court is of the view that the rule of thumb that should be followed while granting damages can be summarised in a chart as under:–
(i) First-time innocent infringer: Injunction
(ii) First-time knowing infringer: Injunction + Partial Costs
(iii) Repeated knowing infringer which causes minor impact to the Plaintiff: Injunction + Costs + Partial damages
(iv) Repeated knowing infringer which causes major impact to the Plaintiff: Injunction + Costs + Compensatory damages
(v) Infringement which was deliberate and calculated (Gangster/scam/mafia) + wilful contempt of court: Injunction + Costs + Compensatory and Punitive damages + Exemplary damages’
xxx xxx xxx’
13. In view thereof, considering the fact that the defendant is a first-time infringer, this Court is of the view that only nominal cost be paid by the defendant, to the plaintiffs.
14. Accordingly, in the peculiar facts and circumstances of the case, and considering the fact that the defendant has not contested the present suit and had made a statement on the very first date with regard to changing the trade name/trade dress, it is directed as follows:
I. A decree of permanent injunction is passed in favour of the plaintiffs and against the defendant, thereby, restraining the defendant or any other person, acting for and on his behalf, from manufacturing and/or selling, offering for sale, distributing, advertising and / or in any manner, whatsoever, dealing in the infringing product ‘Vizag Gold’s COPPER+ WATER’ bearing the trade dress or from dealing in any other product that may have a trade dress similar to the plaintiffs’ trade dress or amounting to infringement of the plaintiffs’ copyrights subsisting in the packaging / trade dress of their ‘TATA COPPER+ WATER’ product.
II. A cost of ₹1,00,000/- shall be paid by the defendant to the plaintiffs, which shall be paid, within a period of four weeks, from today.
III. The aforesaid cost be paid by the defendant by way of a demand draft, in favour of plaintiff.”no. 2, as per the particulars given in the Memo of Parties.”
Citation: Tata Sons Private Limited & Anr. v. Mohan Kumar Kotana, CS(COMM) 91/2024 & I.A.39896/2024 (H.C. Delhi Sept. 19, 2024). Available at: [http://indiankanoon.org/doc/55646191/](http://indiankanoon.org/doc/55646191/), Visited on: 06/10/2024.
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