A well-known trademark dispute: Microsoft v. Retnec Pvt Ltd
The well-known tech giant “Microsoft Corporation” has quite a history of appearing in a plethora of cases involving intellectual property rights. The tech giant flashed in the news again in the trademark dispute with Gurugram-based fraudulent call centre company “Retnec Private Limited.” Microsoft is entitled to receive 55 lakhs as damages plus litigation costs amounting to 20.5 lakhs in Indian currency. The Indian Constitution’s Article 19(1)(g) grants Indian people the freedom to engage in trade or business. However, some businesses, like ‘Retnec’ in the present case, are causing injury to the rights of others by doing shady business practices such as scamming people and infringing several trademarks (“Hotmail”, “Outlook” and “Office 365”) of ‘Microsoft Corp.’
Background of the case
Microsoft is well-known and recognisable brand by their many products and services among masses and have registered trademarks around the globe including India. The plaintiff, Microsoft has developed good will in people with their products & services and built a stellar market reputation over the time. Retnec Private Limited (Defendant 1), a call centre from Gurugram, India operating by it’s directors Mr. Zayed Sahaye (Defendant 2), Mr. Akshay Anand (Defendant 3) in connivance with some entities (Defendant 4 to 12) registered under USA laws. The defendants in the case are representing themselves as “MICROSOFT technical support” inducing the true customers along with use of trademark of plaintiff by method of cold calls, pop-up messages, and search engine optimization techniques. The defendants scammed people from several countries, including the USA and Canada. The poor victims believed that they were representatives of Microsoft and paid for the services. Plaintiff got knowledge about the fraud through reports by customers in their complaint portal (https://www.microsoft.com/en-us/concern/scam). In 2018, Microsoft approached Gurugram police with evidence filed a complaint against defendants. The police got sufficient material evidence when raided on the premises of defendants. The plaintiffs filed a suit to restrict infringement of trademark by defendants, passing off, unfair trade practices, and seeking remedy under sections 29, 135 of Trade Marks Act, 1999.
Legal Analysis
In December 2024, The Delhi High Court in the case Inter IKEA Systems BV v. I Key Home Studio LLP, issued an order to the Indian company named ‘IKEY Home Studio,’ which uses a similar name as the plaintiff (IKEA), to take down materials infringing on the well-known trademark IKEA, which has a global reputation similar to ‘Microsoft Corp.’ The status of renowned trademarks indicates that the brand possesses a strong reputation among individuals, both inside and beyond a certain territory. Trade Marks Act, 1999 (herein after referred as TM Act, 1999), Section 2(1)(zg), defines a “well-known trademark” as a mark/logo that is sufficiently recognized by the public to suggest a relationship between the company using the trademark and the products or services.
In another case of intellectual property dispute, Microsoft Corporation Vs. K Venkata Jagdeesh Babu & Anr, Justice Manmohan Singh, Delhi High Court ruled “The trademark Microsoft is clearly a renowned trademark. This is widely recognized by the majority of individuals globally. No individual is permitted to utilize the same as a trademark or as part of their trading style or corporate name in connection with similar or dissimilar businesses, since the aforementioned trademark have distinct goodwill and reputation.”
Section 11 of the TM Act, 1999 safeguards the well-known trademarks across all classes of goods & services. This signifies trade mark registry will reject any application under the name ‘MICROSOFT’ across all classes other than Microsoft itself. Section 28(1) of the TM Act, 1999, confers upon plaintiffs the rights to utilize and to initiate legal action in instances of infringement. Upon examining section 29(1) in conjunction with section 28(1), it becomes apparent that trademark infringement involves the utilization of a trademark that is either identical or deceptively similar to that of the plaintiffs (Microsoft).
By the section 29(2) and 29(3), the acts of defendants representing themselves as plaintiffs authorised entity and use of exactly similar trademark of plaintiff caused public to believe defendants as true authorised entity of plaintiff (Microsoft). The fraudulent defendants misused plaintiffs well-known trademark, which was quite famous around the world, including in India. The unfair advantage over the plaintiffs customers and made illegal monetary gains, which constitutes trademark infringement under Section 29(4) of the TM Act, 1999. Therefore, it is evident that defendants involved in infringement of trademark, passing off, unfair trade practices.
The doctrine of dilution of trademarks states that trademark dilution happens when person or party who are not authorised to use the trademark uses the trademark to dwindle the good name of well-known trademark. The section 29(4) of the TM Act, 1999 provide the concept of trademark dilution and conditions for dilution as follows:
- Make use of either alike or deceptively similar trademark
- Use of trademark in other classes other than registered class or classes
- Use of trademarks which have good name in India
- Use of trademark to induce people
In India, According to TM Act, 1999, section 135(1), the courts award the following reliefs for trademark infringement or passing off:
- Permanent or interim injunction
- Damages
- Account of profits
- Destruction and seizure of goods using infringing trademark
- Cost of legal proceedings
The landmark decision by Delhi High Court in the case Koninlijke Philips N. Vs. & Anr. V Amazestore & Ors, has elucidated the legal framework for the provision of compensatory damages in instances of intellectual property infringement. The Delhi High Court has established a clear and streamlined framework for other courts to award compensatory damages in instances of evident mala fide and flagrant infringement. This judgement resulted in increased damages awarded to plaintiffs in additional situations, so establishing a deterrence effect for infringers attempting to exploit another’s intellectual property. The Gurugram exclusive commercial in the present suit used the guidelines established in the aforementioned case to determine damages amounting to ₹55 lakhs plus litigation costs amounting to approximately ₹20.5 lakhs respectively.
The rapid advancement of technology pushes us to use digital products for the easement of life in every aspect. In the current digital age, it is quite impossible to live without gadgets. However, this comes with the risk of falling victim to scammers who take advantage of the inherent vulnerabilities in these technologies. The fraudsters who use the trademarks of well-known brands such as Microsoft, Reliance, TATA trick victims into falling for their bogus services.
The safeguarding of well-known trademarks is quite important in terms of their contribution to GDP. They are vulnerable and mostly scammers exploit the good name of a well-known trademark to deceive the public at large. Over the years, the intellectual property jurisprudence in India developed significantly, and courts now award substantial damages based on the specific circumstances. Even though intellectual property regulations protect the rights of the brand owners, they require continuous vigilance and adapting methods from their side to protect their valuable intellectual property.
Author: Pranay Borupothu, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing
References
- Microsoft Corporation & Anr. Versus Retnec Solutions Private Limited & Ors, CNR No. HRGR01-000081-2022, CIS No. CS-01-2022
- Inter Ikea Systems BV v. I Key Home Studio LLP, 2024 SCC OnLine Del 9160
- Narula R, Dalal S and Oberoi V, “Well-Known Marks in India: Legal Landscape and Protection | Managing Intellectual Property” (MIP, January 23, 2025) <https://www.managingip.com/article/2ebnlopeph3xdarpzaxog/sponsored-content/well-known-marks-in-india-legal-landscape-and-protection>
- Microsoft Corpn. v. Kurapati Venkata Jagdeesh Babu, (2014) 9 HCC (Del) 10
- George MP, “A Nuanced Trademark Distinction: 29(1) vs 29(2)? – Part I by Eashan Ghosh” (SpicyIP, July 17, 2019) <https://spicyip.com/2017/06/on-sections-291-and-292-of-the-trade-marks-act-i-guest-post-by-eashan-ghosh.html>
- Koninlijke Philips N.V. v. Amazestore, 2019 SCC OnLine Del 8198
