The TATA vs. Greenpeace case

This is a recent case involving TATA Steel Ltd. and an international environmental NGO called Greenpeace. TATA Steel Ltd. plans to set up a steel plant at Dharma Port which is situated off the coast of Orissa and is purportedly endangering the lives of numerous Olive Ridley turtles habituating near the port. Greenpeace initially contended that TATA did not comply with all the requirements of the Environment Ministry whereas TATA argued that they had got the environmental clearance. Following thus, Greenpeace India raised serious concerns against TATA’s new project. It launched an online game on its official website title ‘Turtle v. TATA’ in order to generate public awareness regarding TATA’s steel port located off the coast of Orissa, which is one of the last nesting grounds of the endangered Olive Ridley Turtles. The game, a rendition of ‘Pac-Man’ involves the yellow turtles to eat as many white balls and other sea animals without running into the TATA demons. TATA Group contends that Greenpeace India infringed their trademark rights and maligned their reputation by using the TATA’s trademark and logo, ‘the T within a circle’ to portray the ‘demons’ in the game.

Greenpeace India has relied upon Section 29 (4) of the Trade Marks Act, 1999 which states that:

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

Greenpeace maintains that since the trademark (T within a circle) was used for gathering public support against the construction of Dharma Port Company Ltd. and to fairly criticise the acts of the TATA group, it in no way infringed their trademark rights. Greenpeace contended that there was no intention to defame the TATA group, whereas the TATA demons were used as a medium to inform the people of the harm the new project of TATAs could cause to the already endangered species of turtles.

Usually in cases where the infringing mark is identical with the registered trade mark and the goods or services are also identical with the goods or services covered by the registered trade mark the court shall presume that such mark is likely to cause confusion in the mind of the public.

The law of trade mark in India allows the usage of one’s trade mark by another only in certain situations. This provision has been described under Section 30 (1) of the Trade Marks Act, 1999 and reads as follows:

Nothing […] shall prevent the use of registered trademarks by any person for the purposes of identifying goods or services as those of the proprietor, provided the use:

a) is in accordance with the honest practices in industrial or commercial matters, and;

b) is not such as to take unfair advantage of or to be detrimental to the distinctive character or repute of the trade mark.

It is important to note here that if the infringer has absolutely copied the mark and made a facsimile repression of it, no further evidence is required to prove trade mark infringement. When the similarity is so close so as to make it impossible to suppose that such marks were devised independently of each other, in the absence of evidence of a common origin, the conclusion is always that one party copied the mark of another and suitably Greenpeace should be liable for trade mark infringement.

However, the online game is designed as creative, peaceful and non- confrontational platform to draw attention to the threat that the Olive Ridley Sea Turtles are facing due to the Project.

Greenpeace India submits that its use of the TATA trademark and “T” device does not amount to trademark infringement, as it is not commercial usage, meant to profit or gain from the goodwill or reputation of such marks.