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2013 DIGILAW 1649 (DEL)

Jaguar Land Rover Ltd. v. Saurabh Khaneja

2013-08-30

M.L.MEHTA

body2013
ORDER : M.L. Mehta, J. I.A. 13704/2013 (For Exemption) Exemption allowed, subject to all just exceptions. The application stands disposed of. CS(OS) 1663/2013 Issue summons in the suit to the defendants on filing of PF/RC/taking steps by the plaintiff within a week, returnable for 9th December, 2013. I.A. 13703/2013 (under Order XXXIX Rule 1 and 2; and Section 151 of CPC) in CS(OS) 1663/2013 1. This is an application under Order 39 Rule 1 and 2 on behalf of the plaintiff for interim injunction restraining the defendant from using the their registered trade mark ROVER with respect to modified cars identical to the RANGE ROVER EVOQUE. The plaintiff, Jaguar Land Rover Ltd. is a British multinational automotive company. The plaintiff is the registered proprietor of several ROVER formative trademarks, such as LAND ROVER, RANGE ROVER etc., in relation to Class 12 goods and services, which pertains to vehicles; apparatus for locomotion by land, air or water. 2. The plaintiff's history in terms of adoption of the mark LAND ROVER is traceable to the 1940's and by October 1948, Land Rover had obtained significant prominence and had dealers operating in 68 countries. Ever since, the plaintiff has manufactured various advanced versions of the Land Rover, viz. Land Rover Series II and IIA, Range Rover, Land Rover Defender, Land Rover Discovery and Land Rover Freelander. The plaintiff is the registered proprietor of the trade mark 'ROVER' in India since the year 1944. The plaintiff has also registered its several formative marks such as LAND ROVER, RANGE ROVER etc. in India. A detailed list of all the registered trademarks of the plaintiff is reproduced in paragraph 20 of the plaint. 3. The instant case pertains to the recent edition RANGE ROVER EVOQUE, which is available in Indian markets and is priced between 55.99 lakhs and 63.86 lakhs, depending on the variant. The defendant No. 3, Big Daddy Customs, Saroop Nagar, New Delhi; is a company that is engaged in the business of making custom made cars. Defendant No. 1 and 2 are said to be Chief Manager of Operations, and Proprietor respectively. The plaintiff has alleged that the defendants are modifying Tata Safari cars into RANGE ROVER EVOQUE look-alikes carrying the brand logo MOON ROVER. The plaintiffs contend that this amounts to infringement of registered trademarks, disparagement, dilution, tarnishing of trademarks as well as brand equity, and passing-off. 4. The plaintiff has alleged that the defendants are modifying Tata Safari cars into RANGE ROVER EVOQUE look-alikes carrying the brand logo MOON ROVER. The plaintiffs contend that this amounts to infringement of registered trademarks, disparagement, dilution, tarnishing of trademarks as well as brand equity, and passing-off. 4. The plaintiff submits that it became aware of the infringing activities in early August 2012 through the defendant's website www.bigdadycustoms.in, as well as their facebook page available at www.facebook.com/bigdaddycustoms. On the said websites, the defendant was offering to modify, amongst other cars, Tata Safari vehicles into a RANGE ROVER EVOQUE look alike by changing the body kits/panels. The defendant was also branding the said RANGE ROVER EVOQUE look alike with the mark MOON ROVER. 5. With a view to amicably settle the matter, the plaintiff served upon the defendants, a Cease and Desist Letter dated August 17, 2012. In their reply, vide a Letter dated September 8, 2012, the defendant confirmed that they had made only one MOON ROVER, and that the name MOON ROVER was adopted on the suggestion of the customer who requested the said modification. The defendants also acknowledged that the brands LAND ROVER and RANGE ROVER were distinct brands of the plaintiff, and hence undertook to withdraw the use of the name MOON ROVER, along with the use of any other specific part in customized car made by them to which the plaintiff had any serious objection. The plaintiff submits that subsequent to the above letter, the parties exchanged various settlement proposals, which never fructified into an agreement. The settlements purportedly went on until early April 2013. 6. However, on August 5, 2013, the plaintiff became aware that the defendants' advertisement on their facebook page, which reads as follows: Prices for Moon Rover mod (sic: modification) are going to increase from 15th Aug, 2013 onwards. So guys hurry up'. Please leave an email at mail@bigdaddycustoms.in for price inquiries. 7. The plaintiff submits that it apprehends that the defendants have not honoured its undertaking given vide the letter dated September 8, 2012 and has enough reasons to believe that the defendants have manufactured more than one MOON ROVER in the interregnum. The plaintiff submits that the defendants are inducing the public into buying their modified vehicles and availing their services by specifically copying the get-up/design of the plaintiffs RANGE ROVER EVOQUE and branding it as the MOON ROVER. The plaintiff submits that the defendants are inducing the public into buying their modified vehicles and availing their services by specifically copying the get-up/design of the plaintiffs RANGE ROVER EVOQUE and branding it as the MOON ROVER. The plaintiff claims that the actions of the defendants leads to dilution of the plaintiffs RANGE ROVER EVOQUE, both my 'blurring' (lowering the distinctive value) and 'tarnishing' (casting an unflattering light), there by diluting and diminishing the plaintiffs overall distinctiveness, effectiveness, and prestigious connotation of the plaintiffs trade mark and design. 8. I have perused through the documents placed on record and also visually compared the photographs of the two rival cars. The plaintiff has placed copies of all the registered trademarks held by it with respect to the mark ROVER and all its formative names such as RANGE ROVER, LAND ROVER etc. The plaintiff has also placed on record its advertisements and sales figures in India and abroad. The internet extracts showing brand value of the plaintiff's brand are also on record. I have also perused through the communication and correspondence between the parties, wherein the defendants themselves have admitted that the plaintiff's brands RANGE ROVER and LAND ROVER carry distinct brand value. I find that the plaintiff has made out a prima facie case of infringement, dilution and tarnishment of its trademark ROVER. 9. It is also evident from the defendants' letter as well as website and facebook page, that the defendant has just commenced business in modifying cars, and has not fully progressed into a full-time and large scale operation. Further, by the defendants' own admission, only one such MOON ROVER was made. Since the impugned business activities of the defendants are at a nascent stage, the balance of convenience does lies in favour of the plaintiff. The plaintiff has also been able to establish irreparable harm which will be caused to it by the impugned activities of the defendants which may lead the public to believe that vehicles under the name MOON ROVER emanate from the plaintiff. And in the event the performance, durability and overall get-up of the modified vehicles does not meet the standard expected by the public from the plaintiff, the plaintiff will be held responsible for such deficiency. This will also amount to disparagement, dilution and tarnishment of the plaintiff's well-known trademark, thereby causing them irreparable harm. 10. And in the event the performance, durability and overall get-up of the modified vehicles does not meet the standard expected by the public from the plaintiff, the plaintiff will be held responsible for such deficiency. This will also amount to disparagement, dilution and tarnishment of the plaintiff's well-known trademark, thereby causing them irreparable harm. 10. In light of the above, I hereby grant an ex-parte interim injunction in favour of the plaintiff restraining the defendants, or their agents, or any other person acting for or on their behalf, from using the mark ROVER or any other registered trade mark of the plaintiff such as RANGE ROVER, LAND ROVER etc. and any other permutations or combinations thereof. The defendants are also restrained from making any modified vehicle that may be a look-alike or bear any resemblance with the get-up/trade dress of the plaintiff RANGE ROVER EVOQUE, during the pendency of this suit. The defendants are also directed to take down all references made by them on their website as well as facebook page, regarding the custom-made modifications/look-alikes of the plaintiffs RANGE ROVER EVOQUE bearing the name MOON ROVER. 11. The application stands disposed. 12. Order 39 Rule 3 C.P.C. to be complied within seven days. Renotify on 09.12.2013.