Delhi High Court: A Single Judge Bench of Amit Bansal, J.* held that the registrations and the long usage of the trade mark ‘CROMA’ by the plaintiff, Infiniti Retail Ltd., and the goodwill vested in the well-known trade mark ‘CROMA’ entitled the plaintiff for grant of a decree of permanent injunction. The Court further opined that the use of the trade mark ‘CROMA’ as a part of the impugned website was likely to deceive unwary consumers of the defendants’ association with the plaintiff.
The plaintiff, a part of TATA Group, owned and managed a national chain of retail shops offering a wide range of electronics, consumer products, household appliances and allied goods which included televisions, home appliances, kitchen appliances, phones, computers, audio and video products, camera, grooming and wellness products, gaming products, accessories etc., under the mark ‘CROMA’. The plaintiff operated through its physical stores and its website www.croma.com and was the registered proprietor of the ‘CROMA’ and ‘CROMA’ formative marks in Classes 9, 11 and 35 in relation to the wide range of goods and services. The mark ‘CROMA’ was declared to be a ‘well-known trade mark’ by the Registrar of Trade Marks in 2020.
In 2022, the plaintiff was made aware of registration of the domain name www.croma.in (‘impugned website’) which contained plaintiff’s registered and well-known trade mark ‘CROMA’ by a third party. The said website was being squatted on by an unrelated third party who had been earning revenues through targeted geo-located advertisements provided by a separate service. The said website was also being offered for sale for USD 3500. Defendant 1 was the owner of the impugned website and the unauthorised and illegal use of the plaintiff’s well-known trade mark ‘CROMA’, infringed the trade mark of the plaintiff.
Analysis, Law, and Decision
The Court vide its Order in 2022 granted an ex parte ad interim injunction in favour of the plaintiff restraining Defendant 1 from using the trade mark ‘CROMA’. The Court opined that the plaintiff had been able to prove that it was the registered proprietor of the well-known trade mark ‘CROMA’ in several classes and the said registrations were valid and subsisting. The Court noted that the impugned website of Defendant 1 was identical/deceptively similar to that of the plaintiff and was likely to deceive the public of its association with the plaintiff.
The Court relied on Anugya Gupta v. Ajay Kumar, 2022 SCC OnLine Del 1922 wherein this Court while applying the principles of the trade mark law had held that “right of the proprietor in a domain name was entitled to equal protection”. The Court opined that user traffic might be diverted due to the same or similar domain name, which could result in a user mistakenly accessing one domain name instead of the one intended. A domain name might, therefore, have all characteristics of a trade mark and could result in an act of passing off. Thus, the Court further opined that the use of the trade mark ‘CROMA’ as a part of the impugned website was likely to deceive unwary consumers of their association with the plaintiff.
The Court further opined that it was clear that Defendant 1 had registered the impugned website with the sole purpose of directing traffic of legitimate consumers by deceiving them into believing that the impugned website was associated with the plaintiff. Further, Defendant 1 was earning revenue through advertisements on the parked impugned website and was soliciting to offer the website for a large sum of money. The acts of Defendant 1 amounted to infringement of the well-known trade mark of the plaintiff and passing off the services of Defendant 1 as that of the plaintiff. Such acts of Defendant 1 would also lead to tarnishment of the plaintiff’s mark.
The Court held that the registrations and the long usage of the trade mark ‘CROMA’ by the plaintiff, and the goodwill vested in the well-known trade mark ‘CROMA’ entitled the plaintiff for grant of a decree of permanent injunction. Further, the Court directed Defendant 2 to transfer the impugned domain name www.croma.in to the plaintiff, failing which, the National Internet Exchange of India should send a written communication to Defendant 2 to transfer the impugned name www.croma.in to the plaintiff.
[Infiniti Retail Ltd. v. Croma through its Proprietor, 2023 SCC OnLine Del 2799, decided on 12-5-2023]
Advocates who appeared in this case:
For the Plaintiff: Sauhard Alung, Advocate.
*Judgment authored by: Justice Amit Bansal