The present suit was filed by Infosys Limited, the plaintiff, against the Defendant, alleging infringement under Section 29(5) of the Trade Marks Act, 1999.

Incorporation of Companies:

Incorporated in the year 1981, the Plaintiff, six years after its incorporation, secured registration of ‘INFOSYS’ as a wordmark in Class 9. Since then, the mark has been registered across several other classes.

The Defendant company, on the other hand, was incorporated in 1994 under the name ‘Disha Financial Services Limited’. Subsequently, it shifted its business focus and changed its name to ‘Southern Infosys Limited’ in 1998.

The decision of the Delhi High Court:

The decision of the Court is summarised below:

• Trademark as part of corporate name

As per Section 29(5) of the Act, the use of a registered trademark by a person amounts to infringement if a) such mark is used as his trade name, name of business concern, or part thereof, and b) the person deals in goods or services in respect of which the trademark is registered. Both the conditions were said to be fulfilled in the instant case. The adoption of the trademark by the Plaintiff and its registration predated the mark’s incorporation in the Defendant’s corporate name. Further, specific references were made to the overlap in the parties’ business activities, the objects clause in the Defendant company’s MOA and failure on the part of the Defendant to show dissimilarity in the goods and services.

• Likelihood of consumer confusion

Though the Court clarified that the said Section did not require one to prove that the use of the trademark resulted in public deception or dilution of the mark, it went on to address this aspect as well. Considering the visual, phonetic, and conceptual similarity between the marks, on a prima facie assessment, the Court observed that there was a likelihood of consumer confusion.

• Concealment regarding issuance of previous notices not intentional

As to the submissions made by the Defendant asserting deliberate concealment by the Plaintiff of the issuance of notices in 2001 and April 2020, the Court noted that there was no documentation regarding the 2001 notice and also accepted the Plaintiff’s contention that operational disruptions owing to the pandemic led to the oversight in disclosing the April 2020 notice.

• Delay in initiating action does not extinguish rights under trademark law

Before proceeding to the objection regarding delay, the failure on the part of the Defendant to conduct due diligence before adopting its corporate name was pulled up. This was considered against the backdrop of the trademark being recognised in the industry for over 17 years (before Defendant’s adoption). The Court went on to hold that the delay of over 20 years on the part of the Plaintiff in initiating action did not extinguish its trademark rights, especially in light of the continuous use of the trademark. The mere delay was also held not to constitute acquiescence.

• Trademark has acquired distinctiveness

Citing the concept of acquired distinctiveness, the Court dismissed assertions that the Plaintiff’s trademark was generic and merely descriptive of the services provided. The Court remarked, “‘INFOSYS’ has transcended its ostensibly descriptive origins to embody a unique identifier of the Plaintiff’s goods and services. Over decades, ‘INFOSYS’ has been consistently used, promoted, and legally protected as a trademark, deeply embedding it in the public consciousness as synonymous, not with a general category of technology services, but specifically with the Plaintiff’s goods and services.”

Finally, the Court issued an injunction restraining the Defendant from using the Plaintiff’s trademark in its corporate name. Since the Defendant had been using the trademark for over twenty years, it was considered prudent to give the defendant four months to transition to a non-infringing trade name. The matter will be heard next on August 20.

Remarks:

While there have been numerous cases of Infringement of Infosys marks in India and some landmark cases as well, this will indeed be added to the list provided the final rulings are in favour of the Plaintiff. This is purely due to the Court’s acknowledging the infringement even though the delay in filing the suit was over two decades. This ground, if upheld upon appeal, will help in future action where the delay in initiating the suit denied an injunction.