INTEL CORPORATION  Vs RAKESH JAIN AND ORS. -Judgment by Delhi High Court

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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 20th April, 2022
+ CS (COMM) 391/2018 & I.A. 9678/2005
INTEL CORPORATION ….. Plaintiff
Through: Mr. Ranjan Narula and Mr. Shashi Ojha, Advocates (M.98981584230).
versus

RAKESH JAIN AND ORS. ….. Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff in 2005 seeking permanent injunction against infringement of trademark, as also reliefs for passing off, damages, etc. in respect of its trademark �CELERON�, against Defendant No.1 – Mr. Rakesh Jain, Director of Defendant No.2, Defendant No.2 – Celeron Electronics Pvt. Ltd. and Defendant No.3 – B M Electrovision.
3. In this matter, summons was issued vide order dated 1st December, 2005 and issues were framed thereafter. Once the leading of evidence commenced, the Plaintiff�s witness PW-1 first appeared on 21st January, 2008. He was then partly cross-examined on 15th July, 2008 and since then, despite repeated opportunities, the Defendants had not further cross-examined the Plaintiffs and had not filed their evidence. Therefore, vide order dated 2nd December, 2013, their opportunity to lead evidence was closed. This matter has since been listed in the category of �Finals Matters� and none has appeared for the Defendants on the last two dates in 2018 and in March, 2022. Vide previous order dated 9th March, 2022, intimation was also issued to ld. counsel for the Defendants. However, none appears for the Defendants even today. Accordingly, the Court has proceeded further.
4. The Plaintiff is a company engaged worldwide in the business of developing, manufacturing, and selling a variety of computing, communications and Internet-related software and services. The Plaintiff�s customers are stated to include individual consumers, businesses, schools, businesses, industrial manufacturers, government, military, etc. The Plaintiff introduced the world�s first microprocessor in 1971 and in 1998, it is stated to have adopted the mark CELERON for a new range of microprocessors for personal computers, etc. The word is stated to be a coined word, having no dictionary meaning. The Plaintiff is also stated to have popularized the said mark by way of extensive publicity in the 1990s. The said mark is also a registered trademark in classes 9 and 16, registered in the year 1998, as also in various other countries in the world. The said registration is stated to be valid and subsisting, and has been renewed till 2028.
5. The case of the Plaintiff is that around August, 2004, they became aware that the Defendants had commenced the use of the name Celeron Electronics Pvt. Ltd. trading in wire wound resistors, used as components in the computer market. Defendant No.3 was found to be a sister concern and all the Defendants were found to be promoting business/activities under the name CELERON. After some communications sent to the Defendants to stop the use of the said mark were unsuccessful, the present suit was filed seeking permanent injunction.
6. Heard the ld. Counsel for the Plaintiff and perused the record. The Plaintiff has registered the trademark �CELERON� in various classes and the said registration is still valid. The Plaintiff�s mark is also registered in various countries including Australia, Canada, Brazil, China, Denmark, Italy, Korea, UAE, USA, UK, etc. The Plaintiff has also received widespread recognition for its range of microprocessors including �CELERON�, in various magazines in India and abroad being Business Week, Asiaweek, etc.
7. A perusal of the documents placed on record by the Defendants, also shows that Defendant No.2- Company was incorporated by the name Celeron Electronics Private Limited on 20th March, 2002, in Delhi. The main objects clause of its Memorandum of Association provides that the company carries on business in India as manufacturers, processors, sellers, dealers, etc. of all kinds of electronics/electrical goods, components, etc. The Defendants have attempted to give some justification as to how they adopted the mark CELERON. The extract of the written statement reads:
�B. The key foundation of the entire case of the plaintiff is of a conception that Celeron – a registered trade mark which is palpably wrong.
Words came into existence through various sources. The word formation / word coinage is disciplined in Sanskrit grammar by renowned Sanskrit Grammarian, Maharishi Parini in Ashadyayi Vyakaran (grammar) in eight chapters. The formation of disciplined words is codified on the basis of Parini’s Ashtadyayi Vyakaran.
Vvakaran Siddant Kaumudi – is written by Bhatooji Dixit. In the reference of Siddant Kaumudi there are �
* ADADIGAN (suffix verb) reference ‘ier’ – gatau verb No. 1018 is given in Siddant Kaumudi.
* CHURAxxDIGAN (suffix verb) reference ‘on / oon” – Parihane verb No. 1889 is given in Siddanth Kaumudi.
Photocopies of the above are enclosed herewith for ready reference.
In the light of above Sanskrit grammar references the word “CELERON” can be understood as –
CELERON – CEL+ ER+ON
a) CEL – mount. In Jains the specific mount called “SAMMED Mount” is a well-known shrine of Jains. b) CEL+ER � Tirthankar (one who himself is a personified holy place, i.e. Tirath) who achieves SAMMED mount shrine in the spiritual sense.
c) CEL+ER+ON = CELERON means the Tirthankar/s who goes/go to SAMMED Mount for sublimation of soul through leaving both the physical and astral bodies by performing perpetual devotion (Sadhana).�

8. A perusal of the order sheet in this matter shows that vide order dated 1st December, 2005 an ex-parte injunction was granted in this matter in the following terms.
�It is directed that till the next date of hearing, the defendants are restrained from using the name/mark Celeron as their trading style/trading name or selling products being wire wound resistors under the name/mark.�

9. The issues were framed in this matter on 25th July, 2006. The same are as under:
�1 Whether the plaintiff is a registered proprietor of the trade mark CELERON in respect of Computers and Computer parts as mentioned in paragraph 11 of the plaint ?
2 Whether the suit is bad for misjoinder of defendant No.3.?
3 Whether Shri Rahul Sethi is the constituted attorney of the plaintiff and is authorised to verify and file the plaint ?
4 Whether the use of the mark CELERON by the defendant amounts to infringement of the plaintiffs trade mark ?
5. Relief.�
10. Thereafter, the evidence has also been led by the Plaintiff. PW-1-Mr. Rahul Sethi, constituted attorney of the Plaintiff, appeared and had also been cross-examined by the Defendants, between 2008 and 2012. Some relevant extracts from PW-1�s affidavit in evidence confirm that the said mark was adopted in 1998. He has also deposed as to the reputation of the said mark in India. The relevant extracts read as below:
�7. I say that in the year 1998,’the Plaintiff adopted the mark CELERON for a new range of microprocessors to offer a cost effective solution for basic PC’s (low cost personal computers). The Plaintiff released the first CELERON branded processors in March 1998. Since, its introduction in 1998, the Plaintiff has continued to invest in improving the performance of its CELERON branded family of processors.
XXX
19. 1 say that reputation and goodwill in the mark CELERON can also be gauged from the fact that its website www. Intel.com receives about 2.4 million hits per week from all over the world. The website is a comprehensive source of information about the Plaintiff’s activities and use of the mark CELERON. Users are directed to Plaintiff’s homepage from various domain names, including www.celeron.com. The website of Plaintiff is accessible to internet users in India.
20. I say that by virtue of prior adoption, use and publicity the mark CELERON has come to be exclusively associated with the Plaintiff’s goods and business. The trade mark CELERON is a coined word and enjoys a very high level of distinctiveness. Under the circumstances there cannot be a plausible. explanation for any trader to adopt the name and/or mark CELERON in relation to its goods or as its trading style/corporate name. I say that wrongful adoption of a coined word by a third party and its use as a part of its trade name, amounts to passing off.
I say that the Plaintiff has been extremely vigilant in protection of its trademark rights and has enforced them against any unauthorised use. The order passed by the court in intel Corporation v M.L. Tandon & Ors. in C.S. (O.S.) No. 1680 of 2002, and the undertaking obtained in favour of the Plaintiff by third parties using its trademark/s both as a trademark on goods and/or as a part of corporate name/trading style are already on record and I rely upon the same.�
11. Further, PW-1 has deposed that despite them approaching the Defendants for abstaining from use of their mark, the Defendants did not do so. The same reads as under:
�23. 1 say that the warning letter sent by the Plaintiff’s attorneys to Defendants was not acknowledged or replied to. Thereafter, the Plaintiff sent a reminder on September 8, 2004 through its attorneys. Office copy of the said reminder letter is marked as Exhibit P – 20. I say that the Defendants replied vide letter dated September 18, 2004 claiming that the word CELERON has its origin in the grammar of Indian classical languages and is associated with their religious sentiments without substantiating this fact. Reply received from the Defendants is marked as Exhibit P – 21. I say that the Plaintiff replied to this letter on November 11, 2004 alleging that there is no such word as CELERON in indian language. Further granting them one more opportunity to comply with the requisitions. Office copy of the said letter dated 11’^ November 2004 is marked as Exhibit P – 22. No response was received from the Defendants to this letter. Thereafter, the Plaintiff’s attorneys made several attempt to fix up a meeting with Defendants’ counsel to amicably resolve the matter. However, the Defendants continued to adopt dilatory, tactics to postpone face to face meeting on one pretext or other.�
12. Pertinently, in PW-1�s cross-examination, when questioned about the origin of the word �CELERON�, PW-1 deposed as below:
�On S.A.
Xxxxxxx By Mr. Bahar U. Barky, Counsel for the Defendant

I do not recall as to how the word CELERON was coined. It is incorrect to suggest that I never know about the origin of the word CELERON and that I have falsely stated that I do not recall the same. To my knowledge it would be incorrect to suggest that the word CELERON is originally from Sanskrit language. I do not know Sanskrit except that I had read it long time back at school. The word �Intel Inside- Celeron� would denote that the machine the logo contains the said product.
�
Q. Since you say that it does not have any dictionary meaning and it does not stand for anything in particular, on what basis you claim it to be belonging to the English language?
Ans: It is on the basis that the word has been coined while using alphabets of the English language.
I am not aware that the word �CELERON� belongs to Sanskrit.�
13. The above extracts along with the documents on record, depicts that the Defendant�s use of the term CELERON is much later than the Plaintiff�s. Considering the priority and adoption of the mark �CELERON� by the Plaintiff, internationally and in India as also the fact that the same is a registered trademark, use of the same, as part of a corporate name would be violative of the Plaintiff�s rights in terms of Section 29(5) of the Trade Marks Act, 1999. The injunction granted on 1st December, 2005 has also been operating for several years. The explanation given by the Defendant is also not a plausible explanation and is hence rejected. Ld. counsel for the Plaintiff also submits that the name of the Defendant-company has itself been struck off by the RoC. He places reliance upon the Company Master Data to support this submission, handed over in Court today. In this view of the matter, this is a fit case for passing a decree of permanent injunction.
14. Accordingly, the suit is decreed in terms of paragraphs 31(i) & (ii) of the plaint. The remaining reliefs are not pressed by the Plaintiff. Decree sheet be drawn up accordingly.
15. All pending applications are disposed of.

PRATHIBA M. SINGH
JUDGE
APRIL 20, 2022/dk/ms