The present suit, Tesla Inc. vs Tesla Power India Pvt Ltd & Ors (Order dated May 2, 2024), was filed by the plaintiff against the use of their registered trademark TESLA by the Defendants. The matter came up before the Delhi High Court, which admitted the plaint to be registered as a suit.
Background:
Tesla is a well-known international brand that is registered in the USA and has filed for several Trademark registrations in India under classes 12, 25, 36, 37, 39, and 42 relating to electronic batteries, automobiles, charging equipment, electric vehicles, allied financial and software services, apparel and clothing, solar panels and solar energy equipment, car accessories etc. The plaintiff has similar trademark registrations in several countries across the world and also a presence on the internet through its various social media handles and its website, www.tesla.com.
In April 2022, the plaintiff came across the website of the defendant, www.teslapowerusa.com, which mentioned defendant no. 1, i.e. Tesla Power India Pvt Ltd as well as its US counterpart Tesla Power USA LLC, registered in the USA and is Defendant no. 2 and various newspaper and online advertisements showcasing that the product was similar, i.e. electrical vehicles (EV), EV charging equipment and ancillary apparatus. Accordingly, a cease and desist notice was duly sent to the Defendants in April 2022, but despite some communication, the Defendants never stopped using the name TESLA in their advertisements, due to which the plaintiff filed the present suit for a permanent injunction against the Defendants to restrain them from using the TESLA mark in any form on any goods and services being rendered or advertised by the defendants. Full-page advertisements from leading Indian daily newspapers showing the TESLA logo and name in association with automotive parts and electric vehicles were also put on record by the plaintiff.
Defendant no. 3, Mr. Kavinder Khurana, was present in person and also through counsel and confirmed that he was the CEO of Defendant No. 1 and a Director of Defendants No. 2 and 5. At the same time, Defendant No. 4 has been closed as the business has been shifted to the India entity, i.e. Defendant No. 1. Defendant No. 3 clarified on behalf of all the defendants that they were into business of “Lead Acid Batteries” and had no business pertaining to Electric vehicles or automobiles. The advertisements cited by the plaintiff were issued as part of a marketing alliance with an Electric Vehicle manufacturer named E-Ashva.
Defendant No. 3, through his counsel, put on record the Undertaking on behalf of the Defendants to refrain from the use of the TESLA mark and logo in any form in any advertisements, promotional materials, or for the manufacture or marketing of any e-vehicles or use the same in any joint promotional campaign during the pendency of the present suit. The same was taken on record by the Learned Judge.
The representatives of the Defendants further put on record certain documents, tried to explain their bona fide, and sought time to file their response.
The learned Judge ordered the matter to be listed before the Joint Registrar for completion of pleadings and admission denial of documents before listing before the court for further hearing. However, even before completion of pleadings, the plaintiff reapproached the court on May 28, asserting that there had been sale of scooters by the defendants in violation of order dated May 2, 2024 and the undertaking given before the court to refrain from indulging in any marketing and sales activities for e-vehicles.
The investigator’s report along with the images of scooter, the details of the store and the brochure were handed over to the defendant’s counsel who sought time for seeking instructions. The court granted time of two days for filing affidavit before the court. The defendant handed over certain documents on the next date i.e. 30.05. 2024 but since the same were still not on record, the court ordered the same to be filed and instructed the counsel to ensure adherence by the defendant of the undertaking given in court.
On July 4, the parties agreed to refer the matter to mediation and was accordingly listed before the Mediation Centre of the Delhi High Court on July 18, 2024. The parties have accepted to amicably resolve the issue and report to the court with the terms of settlement when the matter is listed before the court again on September 18, 2024.
Authors: Manisha Singh and Puja Tiwari
First Published by: Lexology here