Delhi High Court: In a suit filed by Elon Musk’s Tesla Inc. (‘Tesla’) against Tesla Power India Private Limited (‘defendants’) seeking permanent and mandatory injunction and damages for infringement of trade marks, passing off and unfair trade competition under Section 134(1) read with Sections 27 and 29 of the Trade Marks Act, 1999, Mini Pushkarna, J., referred the matter to mediation before the Delhi High Court Mediation and Conciliation Centre.
Tesla, a multinational company owned by Elon Musk, engaged in the manufacturing of electronic vehicles (‘EV’), filed a suit for permanent injunction and damages against the defendants, for infringement of trade mark, passing off, and unfair trade competition. The grievance of Tesla is that defendants had been wrongfully using the trade mark/trade name ‘TESLA POWER’ / ‘TESLA POWER USA’ as well as 
and 
.
Tesla’s trade mark in India is pending registration. Tesla claims to have come across defendant 1 and 2, which is a company registered in USA, using the impugned marks ‘TESLA’ in its entirety, in addition to the descriptive phrase ‘POWER USA’.
It was also contended by Tesla that the defendants announced their entry into the same business category i.e., EVs, and provided screenshots of articles and advertisements announcing it:
Consequently, a cease-and-desist notice was sent by Tesla to the defendants on 18-04-2022, to which they gave a detailed response. However, since defendants continued to advertise and market their goods, Tesla filed the present suit in which notice was issued to the defendants by the Court, vide order dated 02-05-2024.
The defendants were also present in the Court on 02-05-2024, where they stated that theirs was a business dealing predominantly with lead acid batteries which were supplied for automobiles, inverters, UPS, and they did not manufacture EVs of any kind, whatsoever. It was further stated by the defendants that the advertisements that were issued, were in respect of a marketing alliance that they had with another manufacturer of EVs, being ‘E-Ashwa.’
Defendants contended that they had no intention of manufacturing EVs and undertook not to market other entities’ EVs as well under their trade mark and trade name ‘TESLA POWER USA’ or any other brand deceptively similar or use the word ‘TESLA.’ It was further submitted that they would refrain from issuing any promotional advertisements or material in relation to EVs under their brand name/ trade name.
However, when the matter came up before the Court on 28-05-2024, it was stated by Tesla that despite the order dated 02-05-2024, which recorded the defendants’ undertaking that they did not manufacture EVs, the investigator’s affidavit revealed an image of a scooter from a dealer which was available for sale, which included brochures as well. Accordingly, by order dated 28-05-2024 the Court directed the defendants to place on record an affidavit disclosing the total number of EVs sold. The defendants filed relevant documents complying with the order dated 28-05-2024.
On 04-07-2024 when parties appeared before the Court, the defendants sought permission of the Court to file sur-rejoinder to Tesla’s rejoinder and expressed their desire to explore the possibility of mediation, to which Tesla was agreeable.
The Court, therefore, referred the matter before the Senior Mediator of the Delhi High Court Mediation and Conciliation Centre.
The matter has been listed next on 18-09-2024, before the Court.
[Tesla Inc. v. Tesla Power India (P) Ltd., 2024 SCC OnLine Del 4594, decided on 04-07-2024]
Advocates who appeared in this case :
Advocates for the plaintiff: Chander M. Lall, Sr. Adv., Nancy Roy, Raghav Malik, Prakriti Varshney, Ananya Chug, Prashant, Advocates.
Advocates for the defendants: J. Sai Deepak, Mohit Goel, Sidhant Goel, Abhishek Kotnala, Kartikeya Tandoon, Aishna Jain, Satish Ahuja, A. Mishra, Avinash Sharma, Advocates.
Buy Trade Marks Act, 1999 HERE
