Delhi High Court: In an instant appeal filed by Infosys Limited (plaintiff) under Section 29(5) of Trademarks Act, 1999 (‘the Act’) to prohibit Southern Infosys Limited(defendant) from using the mark ‘INFOSYS’ as part of its trade/corporate name , Sanjeev Narula, J., restrained the defendants from using the mark ‘INFOSYS’ in their trade name and gave a period of four months to make the transition to a non-infringing tradename.
Background:
In the present case, the plaintiff, being a global leader in information technology and consulting services, built a formidable reputation and a proven track record of delivering innovative solutions that yield tangible business benefits.
This Court had recognized and declared ‘INFOSYS’ as a ‘well-known’ mark as a testament to the trademark’s extensive recognition, distinctiveness, and the substantial reputation it holds across various sectors. Besides, the trademark registry had also declared ‘INFOSYS’ as a well-known trademark.
The plaintiff was aggrieved by the defendant’s adoption of the mark ‘INFOSYS’ as part of its corporate name ‘Southern Infosys Limited.’ The stipulated use of the plaintiff’s registered and well-known trademark ‘INFOSYS,’ constitutes infringement under Section 29(5) of the Act. Infosys had not yet identified any specific services being rendered under the tradename ‘Southern Infosys Limited,’ and the Defendant had not provided documentation to demonstrate such use, the inclusion of ‘INFOSYS’ within the corporate name was, in itself, a clear infringement.
The plaintiff, upon discovering the unauthorized use of their trademark, promptly issued a cease-and-desist notice dated 18-8-2023, which wasn’t responded to by the Defendant
Analysis:
The Court, after perusal of defendant’s contentions and facts, stated that the prima facie view of both marks suggests an affiliation with information systems or technology-related services. While ‘Southern’ may imply a geographical distinction, it does not alter the primary technological connotation of the term ‘INFOSYS.’ This shared similar perception that the goods and services offered under ‘Southern Infosys Limited’ could be endorsed by or affiliated with the plaintiff. In conclusion, on a prima facie assessment the combination of visual, phonetic, and conceptual similarities between the marks, significantly raises the likelihood of consumer confusion, suggesting that ‘Southern Infosys Limited’ might be mistakenly with the plaintiff.
The Court while addressing the contentions raised by the defendant stated:
Concealment of facts by the plaintiff:
The Court noted that the plaintiff had acknowledged the cease-and-desist notice dated 27-4-2020, was not disclosed in the plaint. This oversight, they urge, was not an attempt to mislead the Court but rather an accidental omission. Whereas throughout the proceedings, the defendant had not identified any legal or factual deficiencies in the alleged concealed notice that would materially influence the outcome of the case. Thus, their prayer to dismiss the plaint based on the alleged concealment of the 2020 notice was without merit.
The Delay, laches, and acquiescence:
The plaintiff had indeed taken a considerable amount of time to initiate the present lawsuit, this delay does not extinguish the plaintiff’s rights under trademark law, particularly given the continuous use of their trademark. In trademark jurisprudence, delay or laches could mitigate the remedies available to a trademark owner but does not necessarily negate the right to object to and seek protection against infringement, especially when such infringement poses a continued threat to the brand’s identity and market position.
The Court finds that there was insufficient evidence to support Defendant’s claim of acquiescence. While the Plaintiff did delay in taking action, there is no clear evidence that this delay amounted to an implicit approval of the Defendant’s use of the mark.
The Court while allowing the present appeal stated following directions:
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The defendant was restrained from using the mark ‘INFOSYS’ as part of their corporate/ trade name ‘Southern Infosys Limited’ or in any other manner amounting to infringement of the plaintiff’s trademarks.
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The defendant was afforded a period of four months from the date of release of this order, to make the transition to a non-infringing tradename. Immediately after the expiry of the four months period, the defendant should cease the use of the mark ‘INFOSYS,’ as part of their trade name/ corporate name or in any other manner amounting to infringement of the Plaintiff’s trademarks
The matter was listed before the Joint Register on 20-08-2024.
[Infosys v. Southern Infosys Limited, 2024 SCC OnLine Del 4345, decided on: 27-05-2024]
Advocates who appeared in this case :
For Plaintiff: Peeyoosh Kalra, C.A. Brijesh, V. Mohini and Ishith Arora, Advocates.
For Defendant: Piyush Kaushik, Advocate.
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