Delhi High Court

Casio India Co. Limited vs Ashita Tele Systems Pvt.

Limited on 8 September, 2003
Equivalent citations: 106 (2003) DLT 554, 2003 (70) DRJ
742, 2003 (27) PTC 265 Del, 2003 (3) RAJ 506
Author: M Sarin
Bench: M Sarin
JUDGMENT Manmohan Sarin, J.

1. This is an application moved by the plaintiff under Order 39 Rules

1 and 2 CPC, seeking an ad interim injunction against defendant
No.1, its Directors, agents, assignees from using the domain name of
"www.casioindia.com" or any derivative of the trade mark and trade
name of the plaintiff company 'CASIO' or any combination thereof.
The restraint is also sought against defendant No.2 ENOM,INC, from
permitting use and/or transfer to any third party the domain name
"www.casioindia.com" except the plaintiff. M/s. ENOM Corporate is
duly accredited by the Internet Corporation for Assigned Names and
Numbers as the Registrar for Domain names. Plaintiff also seeks a
mandatory injunction directing defendant No.1 to transfer the above
domain name to the plaintiff company. Further relief regarding
maintenance of accounts is sought.

The application has been moved in the suit for permanent and
mandatory injunction and for rendition of accounts. Suit is said to be
under Sections 105 and 106 of the Trade and Merchandise Marks Act,
1958.

2. The suit was instituted on 23.7.2002. Summons in the suit and

notice in the IA was issued on 31.7.2002. Service was directed by
ordinary process and registered AD post and courier service as well.
Defendant No.1 was duly served, while summons were also sent by
courier to defendant No.2. Written statement and reply to IA has
been filed only on behalf of defendant No.1, who entered appearance
on 21.10.2002. Plaintiff filed additional affidavit and written
submissions. Defendant No.1 has also filed its written submissions
and reply to the said affidavit. Full opportunity was provided to
plaintiff and defendant No.1 who have argued the matter extensively.
The arguments were concluded and judgment reserved on 11.8.2003.

3. The facts, in brief, relevant for the purposes of disposal of the

present application may be noted.

(i) Plaintiff is Casio India Ltd. Defendant No.1 is M/s Ashita Tele
System Pvt. Ltd, Mumbai. Plaintiff is aggrieved by the registration of
domain name "www.casioindia.com" by defendant No.1. Defendant
No.2 is the Registrar with whom the domain name has been
registered. Annexure A to the plaint gives the details of the domain
name registration. The name of the organisation is given as that of
defendant No.1. It also mentions the first and the last name as
`Avinash Johri'. The address given is 152, Modi Street, Second floor
Shahin Apartments, Mumbai. The registration was done on
13.11.1998.

(ii) Plaintiff claims to be a 100% subsidiary of Casio Computer Ltd,

Japan (Casio Japan) which is the registered owner of the trade mark
'Casio' in India used for a large number of electronic and other
products. Plaintiff, namely, M/s Casio India Co. Ltd. vide an
agreement dated 7.11.2000, was made the sole marketing and selling
agent of Casio Japan in India. Plaintiff claims to have been given the
sole and exclusive right to use the said trade mark in India. Plaintiff
claims to have obtained the registration of large number of domain
names in India. These are Casio India Company .com, Casio India.
organisation, Casio India.net, Casio India.info, Casio India.Biz, Casio
India Co.in etc. Casio Japan has similarly registered domain names
worldwide casio.co.jp, casio.com etc. Plaintiff avers that the parent
company has global reputation for the use of the trade mark 'Casio'
all over the world and in particular in Japan and India. It is claimed
that the trade mark `CASIO' is being used by the plaintiff for sale and
marketing all goods such as watches, calculators, digital diaries and
other digital and electronic products. Plaintiff claims to have spent
considerable effort and finances towards advertising and developing
goodwill for its trade mark and trade name `CASIO'. Plaintiff claims
to have spent a sum of Rs.1,60,00,000/- towards advertisement and
development of goodwill in India.
(iii) Plaintiff has filed the present suit claiming that the impugned
registration of domain name by defendant No.1 is identical and
confusingly similar to plaintiff's trade mark 'CASIO'. Defendant No.1
has no right or legitimate interest in respect of plaintiff trade.
Defendant No.1 has registered the domain name to gain illegal and
unauthorized benefit out of the use of plaintiff's brand name 'CASIO'.

(iv) Plaintiff in the process of continuing his business had entered

into distributorship agreement with one M/s Asuka Networking
Solution, represented by Mr. Avinash Johri. The agreement term was
for one year commencing on 12.4.1999. The agreement was not
renewed and expired on 12.4.2000. Plaintiff alleges that it came to its
knowledge in the year 2000 that Mr. Avinash Johri through
defendant No.1, registered the domain name "www.casioindia.com."
in the name of its organization defendant No.1, with the first name
and last name of the registrant being given as Avinash Johri. The
impugned domain name uses the word "Casio" as a predominant part
of the domain name. It is designed to mislead all the internet users,
as the domain name is almost identical and confusingly similar to the
trade mark of the plaintiff. The defendant has no authorization or
right to use the name 'CASIO' in its domain name. The addition of
the word "India" in the website has only increased the likelihood of
confusion for the internet users in India, who would associate
website with the impugned domain name as being that of the
plaintiff.

(v)Plaintiff claims that on account of the long usage of the trade mark
and trade name by Casio Japan, all over the world and by the plaintiff
in India, tremendous goodwill and reputation has been established
in the market for its electronic products sold under the brand `Casio'.
The word `Casio' as part of the plaintiff's brand trading style has
acquired a special connotation, resulting in identification with the
plaintiff, its business and the goods sold by it. Plaintiff alone has the
exclusive right to use the word "CASIO".

(vi) The defendant has obtained the domain name registration to

prevent the plaintiff, who is entitled to use the mark "CASIO" from
using the same in its domain name. It is averred that on repeated
representations by the plaintiff to defendant No.1 to desist from use
of the domain name, the defendant No.1 demanded a sum of Rs.20
lacs for transfer of the domain name. The plaintiff could not accept
this demand. Plaintiff finally issued a notice dated 19th January,
2002, to defendant to cease the user of the domain name on the
website, but to no avail. Plaintiff claims that violation of its
intellectual property by the defendant has impaired its goodwill and
reputation. Plaintiff is also suffering damages and losses on account
of user of its trade mark and brand name by the defendant. The
plaintiff, therefore, claims that it is entitled to restrain defendant
No.1 from using the domain name "www.casioindia.com" as the same
is being used by the defendant without any right, authorisation and
entitlement to derive illegal benefit.

4. Written statement has been filed by the defendant as also the reply
to the application. Mr. Shyam Moorjhani, advocate has also filed
synopsis of his submissions and he has been heard at length. The
defendant opposes the injunction claiming that the plaint itself is
liable to be rejected under Order VII Rule 11 CPC, as not disclosing
any cause of action and being barred by limitation. Defendant urges
that plaintiff is not entitled to injunction on account of delays, laches
and acquiescence. Defendant also questions the locus of the plaintiff
i.e. Casio India Ltd. to institute the suit claiming that the plaintiff was
not the proprietor or owner of the trade name/trade mark Casio. The
suit instituted by the plaintiff was without any authority in the
absence of any assignment by Casio Japan in favor of the plaintiff.
Lastly, it is urged that this Court has no territorial jurisdiction to try
and entertain the suit.

5. Having noticed the factual matrix and the case as set up by plaintiff
and the pleas of the defendant in opposition, let us examine the
entitlement of the plaintiff to the injunction claimed. This can
conveniently be done by considering pleas raised by the defendant
under the following heads :-

(a) Locus to institute suit and claim injunction.

(b) Territorial jurisdiction to try and entertain the suit.

(c) Prima facie case and balance of convenience.

(d ) Whether plaintiff disentitled to injunction on account of delays,
laches and acquiescence.

6. (a) Locus to institute suit and claim injunction.

The defendant questions locus standi of plaintiff to institute the suit.

It is submitted that there is nothing on record to show that either the
plaintiff is proprietor of the trade mark 'CASIO' or is the registered
user thereof, authorised to use it as a trade mark or domain name.
Assuming but not admitting, plaintiff to be the 97% or 100%
subsidiary of Casio Computor Company Ltd., Japan, it does not
follow that the said trade mark is assigned to it or it is authorised to
use the same. The mere appointment as the marketing and selling
agent of Casio Japan would not ipso facto entitle it to use the trade
mark or domain name.

(ii) The objection of defendant raised as to locus standi and authority

of the plaintiff to institute the suit is without merit. The Agreement
dated 7.11.2000 between Casio Japan and plaintiff records the user
of the brand name by the plaintiff since 1996. The agreement
specifically records that the plaintiff is and had been authorised to
use the brand name 'CASIO' in India since its incorporation. The
plaintiff was incorporated in 1996. The agreement further authorised
the plaintiff to appoint stockists, distributors, C&F Agents for sales
and marketing of 'Casio' brand product. The agreement term was for
a period of two years and it was in force at the time of institution of
the suit. As per the affidavit dated 20th March, 2003, filed by the
plaintiff, the agreement has since been extended. There is no specific
assignment or authority required empowering the plaintiff to sue
because the said right is a natural consequences to the existence of
the plaintiff as a juristic person. under the Companies Act. The
impugned domain name on the defendant's website uses the name
identical to the corporate name of the plaintiff. Therefore,
irrespective of any trade mark right, it has an inherent right under
common law to seek a restraint on any other business entity from
using its corporate name to do business and that too in the same class
of products. The present suit in substance is one of seeking a restraint
on passing off a portal/website as that of the plaintiff and its
principal. Accordingly, no specific assignment of trade mark or
authority is required for instituting the suit. I, therefore, hold that the
plaintiff has locus to institute the suit and the objection of the
defendant is without merit.

(b) Territorial jurisdiction to try and entertain suit.

(i) The defendant contends that this Court has no territorial

jurisdiction to try and entertain the suit. The defendant No.1 carries
on its business from Bombay and is resident of Bombay. It is urged
that the plaint does not disclose any cause of action arising within the
jurisdiction of this Court. There is only a bald averment that access
to the website using the domain name can be had from Delhi. Counsel
urged that there was not even an averment that the website using the
impugned domain name had been accessed from Delhi.

(ii) This objection with regard to the territorial jurisdiction needs to

be considered in the overall context of advances and development in
the field of information technology and not in the usual conventional
manner disclosing arising of a cause of action, arising for an
individual transaction, within the territorial limits of jurisdiction of
the court.

(iii) The suit relates to an action of passing off in respect of a domain

name of a website. The suit is not in respect of any allegation of any
clandestine specific sale of tangible products within the territory. The
defendant no.1 admits the sale of `CASIO' products through the
website. It is also not denied that the website can be accessed from
Delhi. For determining the question of jurisdiction, the following
decisions and the observations made therein are significant. A
learned Single Judge of this Court in Info Edge India Pvt. ltd. Vs.
Shailesh Gupta & Anr. 2002 (24) PTC 355 while dealing with the case
of domain name `naukri.com' observed "a domain name is more than
an internet address and is entitled to the equal protection as that of
trade mark. In internet service, a particular internet site could be
reached by anyone from anywhere in the world, who proposes to
reach the said website. With the advancement and progress in
technology, the services rendered in the Internet site have also come
to be recognised and accepted and are being given protection so as to
protect such provider of service from passing off the services
rendered by others as his services."

Similarly, the High Court of Bombay in Rediff Communication Ltd.

Vs. Cyber Booth AIR 2000 Bombay 27 recognised the above
principles. The High Court of Australia in Dow Jones & Co. Inc. Vs.
Gutnic (2002) HCA 56 held that due to ubiquity, universality and
utility of the features of the Internet and the World Wide Web
(WWW), any matter associated with it, possesses global jurisdiction.
From the foregoing judicial pronouncements, it would be seen that
once access to the impugned domain name website, could be had
from anywhere else, the jurisdiction in such matters cannot be
confined to the territorial limits of the residence of the defendant.
Further more in a passing off action it is not incumbent upon the
plaintiff to prove any actual sale or any particular act of deception,
mere likelihood of deception, whereby an average person is likely to
be deceived or confused is sufficient to entertain an action for passing
off. Therefore, it is not at all required to be proved that any actual
deception took place at Delhi. Accordingly the fact that the website of
defendant No.1 can be accessed from Delhi is sufficient to invoke the
territorial jurisdiction of this Court in the light of the judicial
principles enunciated in the above judgments. It is, accordingly, held
that the objections with regard to the territorial jurisdiction is
without merit and this Court can try and entertain the suit.

(c ) Prima facie case and balance of convenience.

& (d ) Whether plaintiff disentitled to injunction on account of delays

and laches and acquiescence.

(i) The averments with regard to plaintiff being given the sole and
exclusive right to use the brand `casioindia' have already been
noticed. The global reputation for the brand name `CASIO' claimed
by Casio Japan as also the plaintiff is not in dispute. Plaintiff's
grievance is against the defendant using the domain name
`www.casioindia.com.' An additional affidavit dated 20.3.2003 had
also been filed on behalf of the plaintiff. It is averred in the additional
affidavit that the agreement dated 7.11.2000 of Casio Japan with the
plaintiff, permitting use of the brand name Casio in India has been
extended vide letter dated 5.11.2002 for a further period of two years
i.e. up to 7.11.2004. Plaintiff thus claims to be entitled to use the
brand name `CASIO' in India.

(ii)Plaintiff has a prima facie case based on the agreement with Casio
Japan to use exclusively the brand name and trade mark `CASIO' in
its domain name. The defendant has not paid any heed to the
plaintiff's representations to desist from using the domain name. It
has, therefore, to be examined whether the plaintiff is disentitled to
an injunction on the basis of pleas as made in the written submissions
and the averments in the written statement. The pleas of the
defendant regarding the plaintiff not having a prima facie case on
account of lack of locus as also the court lacking the territorial
jurisdiction to try and entertain the suit have already been examined.
The defendant claims that it registered the domain name on
13.11.1998 which was in the knowledge of the plaintiff. The defendant
claims to have selling `CASIO' products in India with the active
support and guidance of Casio Japan and the plaintiff. It is urged that
defendant had put in considerable hard work and effort to develop its
business, so that the various products including digital diaries,
pagers etc. manufactured by Casio Japan are sold in India. The
defendant's work had been given due recognition by Casio Japan and
plaintiff. It is urged that even an award was conferred in the year
2001 in the Conference at Goa. The setting up and use of the domain
name `www.casioindia.com' was it is argued with the full knowledge
and support of the plaintiff. It is claimed that because defendant
refused to oblige certain senior executives, who were interested in
dislodging the defendant for their own vested interests that this suit
has been instituted. It is for this reason that the plaintiff is now
seeking to restrain the defendant from using the domain name which
has been in continuous use of the defendant since November, 1998.
The plaintiff and Casio Japan had benefited from the website portal
with impugned domain name developed by the defendant. Plaintiff
having taken advantage of the same, it is urged is now seeking to
scuttle the defendant, against all equitable principles.

(iii) It was next argued that the plaintiff was not owner or registered
user of the trade mark. The agreement did not confer any exclusive
right on the plaintiff. This particular aspect has been discussed
earlier under the issue of locus. The agreement of 7.11.2000 as
extended gives the plaintiff right for use of the brand `CASIO' which
would also include the right to have the domain name and site using
the brand Casio and to prevent others from misusing the said name
either as a domain name in a website or otherwise.

(iv) The two other pleas which need to be noticed and dealt with are
the pleas of the defendant that the domain name site as had been
functioning since 13.11.1998 is sought to be stopped by the suit filed
in July, 2002. The defendant submits that the plaintiff's claim that it
came to know of the domain name site in 2000 is not credible. It was
inconceivable that the defendant did not know about the impugned
domain name site only on the year 2000. The defendant has placed
on record the various advertisements taken out in the newspapers for
pagers and products of Casio, wherein the particulars of the
impugned website and domain name are given. The defendant,
therefore, claims that the plaintiff's suit is barred by limitation. In
any case, the plaintiff on account of the delays, laches, acquiescence
and waiver is disentitled to the relief of injunction.

(v) The plea of the defendant with regard to the suit being barred by
limitation in so far as the relief of injunction is concerned is
misconceived and devoid of merit. The limitation starts when the
breach occurs. In the present case, the breach giving rise to the cause
of action is a continuing one or occurs in succession, the right to sue
shall arise correspondingly. Accordingly, as the domain name site
continues to be used by the defendant, it gives a fresh right to sue.

(vi) Coming to the plea of delays, laches and acquiescence.

The defendant contends that when the domain site was registered on
13.11.1998, the name of the plaintiff was Casio Bharti Mobile
Communication Ltd. In terms of the agreement dated 7.11.2000, the
plaintiff was conferred the right to use the brand name since is
incorporation which was in 1996. Reference is invited to the
judgment of this Court in Hindustan Pencil Pvt. Ltd. vs. India
Stationery Products Co. . The Court observed as under:
"It would appear to me that where there is an honest concurrent user
by the defendant then inordinate delay or laches may defeat the claim
of damages or rendition of accounts but the relief of injunction
should not be refused. This is so because it is the interest of the
general public which is the third party in such cases, which has to be
kept in mind. In the case of inordinate delay or laches, as
distinguished from the case of an acquiescence, the main prejudice
which may be caused to the defendant is that by reason of the plaintiff
not acting at an earlier point of time the defendant has been able to
establish his business by using the infringing mark. Inordinate delay
or laches may be there because the plaintiff may not be aware of the
infringement by the defendant as not being serious enough to hurt
the plaintiff's business. Nevertheless, if the Court comes to the
conclusion that prejudice is likely to be caused to the general public
who may be misled into buying the goods manufactured by the
defendant thinking them to be the goods of the plaintiff then an
injunction must be issued. The Court may, in appropriate cases, allow
some time to the defendants to sell off their existing stock but an
injunction should not be denied."

It would, therefore, be seen that while the delay or laches may defeat
the claim for damages or rendition of accounts, but would not result
in refusal of the relief of injunction, in case the plaintiff is so entitled
otherwise. In the instant case, continuous user of the domain name
site gives to the plaintiff a fresh cause of action apart from the right
of the plaintiff qua the defendant to seek a restraint on the later
exploiting its goodwill and reputation or trading in a manner so as to
mislead the general public that the business of the defendant is the
business of the plaintiff or is connected with it. The question of
prejudice caused to the general public also comes into play.
Reference may also be made to two authorities reported as Yahoo,
Inc vs. Akash Arora 1999 PTC (19) 201 wherein learned Single Judge
of this Court held "Admittedly the present case is not for an action for
infringement of a registered trademark, but an action for passing off.
The law relating to passing off is fairly well-settled. The principle
underlying the action is that no man is entitled to carry on his
business in such a way as to lead to the belief that he is carrying on
or has any connection with the business carried on by another man.
It is also well-established that passing-off action is a common law
remedy." In Montary Overseas vs. Montari Industries Ltd. 1996 PTC
142 it is held that "when a defendant does business under a name
which is sufficiently close to the name under which the plaintiff is
trading and that name has acquired a reputation and the public at
large is likely to be misled that the defendant's business is the
business of the plaintiff, or is a branch or department of the plaintiff,
the defendant is liable for an action in passing off." Reference may
also be usefully made to Laxmikant V.Patel Vs.Chetanbhai Shah . The
Supreme Court held, "A person may sell his goods or deliver his
services such as in case of a profession under a trading name or style.
With the lapse of time such business or services associated with a
person acquire a reputation or goodwill which becomes a property
which is protected by Courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in injury
to the business of one who has the property in that name. The law
does not permit any one to carry on his business in such a way as
would persuade the customers or clients in believing that the goods
or services belonging to someone else are his or are associated
therewith. It does not matter whether the latter person does so
fraudulently or otherwise. The reasons are two, firstly, honesty and
fair play are, and ought to be, the basic policies in the world of
business. Secondly, when a person adopts or intends to adopt a name
in connection with his business or services which already belongs to
someone else it results in confusion and has propensity of diverting
the customers and clients of someone else to himself and thereby
resulting in injury. This forms of injury has also been termed as tort
of injurious falsehood."

As observed by the Supreme Court, it is not material whether the

defendant's actions are fraudulent or otherwise. The fundamental
principle is that a person shall not trade under a name so closely
resembling that of the plaintiff as to be mistaken for it by the public.
Besides, as observed in Yahoo, Inc Vs. Akash Arora (Supra), the
disclaimer cannot eliminate the problem. In Jesus Vs. Brodsky
reported at 46 USPQ 2d 1652, it was held, "that due to the nature of
Internet use, defendant's appropriation of plaintiff's mark as a
domain name and home page address cannot be adequately
remedied by a disclaimer."

In view of the foregoing discussion, plaintiff has a good prima facie

case and mere delay and laches would not disentitle in these facts and
circumstances from getting the relief of injunction.

(vii) Let us now consider whether the present case would fall within
the plea of acquiescence as raised by the defendant. The objection of
the defendant is based on the registration of the impugned domain
name on 13.11.1998, when the plaintiff was known as Casio Bharti
Mobile Communication Ltd. The plaintiff has, accordingly,
acquiesced in the use of the domain name by the defendant for 37
months. What constitutes acquiescence has been commented by the
Supreme Court in M/s. Power Control Appliances vs. Sumeet
Machines Pvt. Ltd . The Court observed that :-

"Acquiescence is sitting by, when another is invading the rights and

spending money on it. It is a course of conduct inconsistent with the
claim for exclusive rights in a trade mark, trade name etc. It implies
positive acts' not merely silence or inaction such as is involved in
laches. "It is important to distinguish mere negligence and
acquiescence." Acquiescence is one facet of delay. If the plaintiff
stood by knowingly and let the defendants build up an important
trade until it had become necessary to crush it, then the plaintiffs
would be stopped by their acquiescence. If the acquiescence in the
infringement amounts to consent, it will be a complete defense. The
acquiescence must be such as to lead to the inference of a license
sufficient to create a new right in the defendant."

The law of acquiescence is stated by Cotton, LJ in Proctor v. Bannis

as under:

"It is necessary that the person who alleges this lying should have
been acting in ignorance of the title of the other man, and that the
other man should have known that ignorance and not mentioned his
own title."

It cannot be that the defendant who was having even a distribution

agreement with the plaintiff and arrangement with Casio Japan could
be ignorant of the right of Casio Japan and plaintiff to the exclusive
use of the trade mark and brand name "CASIO'. Besides no positive
act on the part of the Casio Japan or plaintiff has been disclosed
showing plaintiff's knowledge of the use of impugned domain name
by defendant. In these circumstances, the ingredients as required for
acquiescence in the light of the aforesaid principles are not made out.

7. The defendant has failed to disclose any right or title to use

`CASIO' in its domain name. As discussed earlier, the impugned
domain name is confusingly similar to plaintiff's trade mark and
brand name `CASIO' and is likely to cause confusion. Because of the
impugned domain name, members of the public are likely to be
misled in believing that defendant has a business connection or is
associated with the plaintiff and/or CASIO Japan. Simply because
the defendant continues to deal in `CASIO' products in India on
principal to principal basis or sells the same, it does not entitle him
to use the brand name `CASIO' as a domain name in its website. Even
the distribution agreement, which the defendant had with the
plaintiff/Casio Japan has since expired and has not been renewed.

8. In view of the foregoing discussion, it is held that the plaintiff has

made out a good prima facie case for the grant of an injunction. The
balance of convenience is also in favor of the plaintiff and against the
defendant. The defendant cannot be permitted to continue with the
use of trade mark and brand name `CASIO' in its domain name.
Accordingly, defendant No.1 is restrained from using he name
`CASIO' in the impugned website `www.casioindia.com'. Defendant
no.2 would also permit defendant No.1 to have a domain name
registered but without the word `CASIO'. The application is allowed
in the above terms.