India: INTEL Wins Passing Off Action in India

Preface

After Infosys case, Intel Corporation V. Retd Admiral B.R. Vasant & Arn. is yet another case of infringement involving top IT brands in India. Like Infosys case, Intel also successfully prosecuted its case; difference being that in former defendant contested his case while the latter was decided exparte.

Intel Corporation enjoys global reputation with respect to computers hardware including semi-conductor devices, memory chips, microprocessors units, CPU etc. The word INTEL is a part of the Trademark and the trading style of the Intel since 1963. Internationally and nationally, computer manufacturers associate the word INTEL with Intel Corporation. Intel coined the term INTEL INSIDE and launched its revolutionary INTEL INSIDE program, a Logo Licensing and co-operative advertisement program. Under this program, International manufacturers like IBM. Dell, HP, Compaq, WIPRO etc are licensed to use INTEL INSIDE logo on their computers and in their advertising and promotional materials. Intel has over 2000 trademark registrations worldwide including India consisting of or incorporating the word INTEL interalia in respect of computers hardware.

Intel has two wholly owned subsidiaries in India that export Intel products in India. The wide distribution network of Intel Corporation in India has made it a household name. In the year 2001 it transpired to Intel that one Admiral B.R.Vasant is carrying on IT related business activities in the name of the Company Intelsoft Pvt Ltd. In 2001 Intel send a warning to Intelsoft Pvt Ltd informing about their rights in the name and mark INTEL and called upon to settle the issues amicably. Intelsoft did not respond to the warning and continued with the infringing activities. After several rejoinders, Intelsoft responded refuting all the allegations contained in the rejoinder. Intel offered assistance to Intelsoft in name change process and communicated its willingness to give the latter reasonable transition period to achieve the same. Despite the meetings between the parties the dispute couldn’t be settled. Intel finally took recourse to legal proceedings for passing off against Intelsoft.

Intel prayed to the Court for the relief of permanent injunction against Intelsoft restraining the latter from advertising, offering for sale, dealing with IT related goods or services including software development/ providing software and hardware consultancy, data processing or any other goods and services in the name of Intelsoft or other trademark deceptively similar to the Intel trading style and name. Intel also prayed for damages of Rs. 5 lakhs and for rendition of accounts, but this prayer was given up in the final arguments. Despite of the service of notice, Intelsoft did not appear in the Court to defend its case.

The Court proceeded exparte against Intelsoft. On the basis of the evidences and affidavits presented before it, the Court granted permanent injunction against Intel soft. As Intel withdrew the prayer for damages and rendition of accounts, the Court did not order for damages. However Court awarded cost of the suit to Intel against Intelsoft.

The legal battle even in exparte cases is long drawn out. This is evident from the fact that the case was instituted in the year 2003, and the final decision was made in the year 2005. It is important that the adjudication procedure is shortened and made less complicated. It is generally seen in passing off /infringement cases, that the Courts do not award damages unless the same has been prayed for by the plaintiff. In the instance case, as the plea for damages had been given up by Intel Corporation, the Court did not suo motto award the damages. Passing off injures not only the trademark owner but equally offends the interests of the consumers. Whenever blatant and dishonest misappropriation of trademark or passing off occurs, the Courts must award punitive damages to set example for those who have the propensity to indulge in corrupt trade practices.

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