1. Atyati sought to restrain Cognizant from using any mark identical or deceptively similar to its registered device mark.
2. Atyati argued that Cognizant’s application for registration in Classes 35 and 42 evidenced its intention to free-ride on the goodwill and reputation of the ATYATI mark.
3. The court found that Atyati had made a prima facie case in its favour

The Mumbai High Court has recently passed an ex parte injunction in a commercial suit pertaining to IP rights (Atyati Technologies Private Limited v Cognizant Technology Solutions). The plaintiff, Atyati Technologies Private Limited, filed the action against the defendant, Cognizant Technology Solutions, alleging infringement of its trademark and copyright, as well as passing off. Atyati sought to restrain Cognizant from using any mark identical or deceptively similar to the registered mark depicted below:

Atyati’s contentions

In the suit, Atyati alleged as follows:

1. Established in 2006, it is a renowned IT services and consulting company specialised in providing comprehensive end-to-end technology platforms.
2. It facilitates a seamless flow of products and services from financial institutions, government agencies and commercial enterprises to citizens across India, including rural areas.
3. It adopted the house mark ATYATI in 2008 in relation to IT infrastructure, software development and consulting services, among others.
4. In 2019 it rebranded to a unique logo/device which features an orange-coloured hexagonal honeycomb/hive device (see below) symbolising collaboration, compassion and impact, depicted by the slightly inclined representation. The device mark is an original artistic work in which Atyati has copyright.

1. The ATYATI device mark has been openly and extensively used since 2019 and is exclusively associated with Atyati. The mark is registered in several classes, including 16, 35, 36, 38, 41 and 42.
2. Atyati offers services and products across the country through its branch offices, affiliates and partners, and the mark has gained goodwill and reputation over the years.
3. It has vigilantly safeguarded its rights and initiated action against infringers.
4. In October 2023 it became aware that Cognizant was offering IT infrastructure, software development and consulting services using the mark depicted below, which bore a striking resemblance to the earlier adopted, used and registered ATYATI device mark:

1. The addition of the corporate name ‘Cognizant’, the minor changes in the representation of the device and the use of a different colour were of no relevance and amounted to infringement of Atyati’s copyright in the device and of the registered ATYATI mark and ATYATI device mark.
2. Cognizant had filed an application for registration of its mark in Classes 35 and 42 in relation to services which are allied and cognate to those covered by the ATYATI device mark. This evidenced its intention to free-ride on the goodwill and reputation of the ATYATI mark.
3. Atyati issued a cease and desist letter asking Cognizant to stop using the impugned logo and also withdraw the trademark application. Cognizant refused to comply and responded along the following lines:
   1. Its logo mark was adopted in good faith as part of a remodelling exercise.
   2. The rival marks are dissimilar and, as its mark contains its corporate name, there would be no confusion.
   3. Atyati did not have a registration for the device on a standalone basis and the mark was not cited in the examination report of the Trademark Registry.
   4. The rival services were dissimilar and there was no passing off.
4. Despite being put on notice, Cognizant carried on prosecuting its application and obtained the registration of the mark. Bad faith was evidenced by the fact that no justification was given for the adoption of an identical device in relation to similar services.

Atyati sought the destruction of the materials using the impugned logo, as well as the withdrawal/cancellation of the application/registration containing the logo or any other mark/logo identical/deceptively similar to the ATYATI mark/logo.

Decision

At the admission stage, the court, after considering the parties’ pleadings and arguments, held that Atyati had made a prima facie case in its favour, and that the balance of convenience was also in its favour.

The court thus granted an ex parte injunction restraining Cognizant from infringing in any manner the copyright in the ATYATI mark/logo, including reproducing or copying any substantial part of the mark/logo for its services or promotional materials until the next date of hearing.

Comment

The case highlights the importance of carrying out clearance searches prior to adopting a sign as a product or company name. Interestingly, the court did not give weight to the registration obtained by Cognizant of a composite mark comprising the impugned logo. The court instead considered the fact that Cognizant was put on notice by Atyati and was given an opportunity to resolve the matter.

This article first appeared in WTR Daily.