This blog post summarizes four recent trademark cases from various High Courts across India, and provides important takeaways relating to trademarks. In one of the cases, the Karnataka High Court pointed out that a trademark infringement suit can be stayed if a rectification is pending against the same trademark, although it was filed by another party. In another suit, the Delhi High Court, allowed the Defendant in the suit to conduct business under a modified name during the pendency of the case. This arrangement was agreeable to the Plaintiff as well.<\/p>\n
In an appeal from the civil court refusing to stay the suit pending trademark rectification proceedings, the Karnataka High Court held that\u00a0the\u00a0application for stay of a trademark infringement suit need not be based\u00a0on rectification filed by a party to the suit. It observed that the right to file a rectification petition under Section 57 must not be combined with the application for stay of the suit under Section 124. As per the Court, the sections are independent of\u00a0each other, and a trademark infringement suit can be stayed even if the defendant had not filed the rectification petition as long as rectification proceedings against the trademark in question are pending. The Court further\u00a0stated that the passing off\u00a0part of the suit\u00a0shall also be stayed in order to avoid a multiplicity of proceedings.<\/p>\n
Citation: <\/em>THERELEK MACHINES PRIVATE LIMITED vs THERELEK ENGINEERS PRIVATE LIMITED & ORS., High Court of Karnataka, 28th<\/sup> February, 2024, WP No. 28029 of 2023.\u00a0<\/em><\/u><\/p>\n In a case\u00a0relating to the trademark, Nizam\u2019s and Nizam\u2019s Kathi Kabab, the defendant in the case, Nazim Khan, agreed to change the name of his restaurants from Nazim\u2019s to Nazim Khan during the pendency of the suit. Taking\u00a0this on record, the Delhi High Court restrained the defendant from using Nizam\u2019s while the suit is pending. It referred the parties for mediation before proceeding with the case.<\/p>\n Citation: <\/em>RAJESH CHUGH KARTA, AMIR CHAND AND SONS (HUF) ANR. vs MR. NAZIM KHAN PROPRIETOR\/PARTNER NAZIM S KATHI, High Court of Delhi, 26th<\/sup> February, 2024, CS(COMM) 326\/2022 & I.A. 13029\/2023 \u00a0 <\/em><\/p>\n In a case filed by Impresario Entertainment, the proprietor of the trademark, Social, for restaurants and other\u00a0goods\/services, the Delhi High Court passed\u00a0an ex-parte injunction restraining the defendant from using\u00a0\u2018Caf\u00e9 Social\u2019. The defendant in the case was running a caf\u00e9 in Chhindwara, Madhya Pradesh, under the name \u2018Caf\u00e9 Social\u2019. The trademark of the defendant had similar artistic features, and it was also being used on social media. Convinced by Impresario\u2019s case,\u00a0the Court restrained the use of \u2018Caf\u00e9 Social\u2019 online and offline.<\/p>\n Citation: IMPRESARIO ENTERTAINMENT AND HOSPITALITY PVT LTD vs M\/S CAFE SOCIAL THROUGH ITS PROPRIETOR, High Court of Delhi, 27th<\/sup> February, 2024, CS(COMM) 169\/2024<\/em><\/p>\n In a case involving the trademark, Premier, for tissue papers, the Madras High Court held that \u2018Premium\u2019 is confusingly similar to \u2018Premier\u2019. The Court noted how the trademark was being used, and came to the conclusion\u00a0because \u2018Premium\u2019 was being written by the defendant on its products in the same way, with the same font. The Court however did not grant any damages as no\u00a0evidence was submitted by the plaintiff. But, it granted costs to the plaintiff.<\/p>\n Citation: M\/s PREMIER TISSUES INDIA LTD. vs M\/s DOLPHIN TISSUES, Madras High Court, 07th<\/sup> November, 2023, C.S. No.73 of 2021<\/em><\/p>\n <\/p>\n From these cases decided by the various High Courts in India, the following points can be outlined with respect to trademark infringement suits :<\/p>\n Compiled by Ms. Kavya Sadashivan, Consulting & Strategy Team, BananaIP Counsels<\/span><\/p>\n The case note\/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.<\/p>\n If you have any questions, or if you wish to speak with an\u00a0IP expert\/attorney<\/a>, please reach us at:\u00a0contact@bananaip.com<\/a>\u00a0or 91-80-26860414\/24\/34.<\/p>\n","protected":false},"excerpt":{"rendered":" This post discusses recent High Court decisions on trademark infringement, stay of suit, and damages in India. It offers an objective analysis of key legal principles and practical implications for trademark litigation.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":145,"footnotes":""},"categories":[5495,6,11],"tags":[5119,4115,29,5,12073,41,101,5569],"class_list":["post-100922","post","type-post","status-publish","format-standard","hentry","category-case-reviews","category-intellectual-property","category-trademarks","tag-damages","tag-high-court-cases","tag-india","tag-intellectual-property","tag-stay-of-suit","tag-trademark-infringement-2","tag-trademark-law","tag-trademark-rectification"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/100922","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=100922"}],"version-history":[{"count":2,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/100922\/revisions"}],"predecessor-version":[{"id":144394,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/100922\/revisions\/144394"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=100922"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=100922"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=100922"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}2. Nizam\u2019s Vs. Nazim\u2019s for restaurant services: Delhi High Court permits the defendant to use Nazim Khan during the pendency of the suit<\/h6>\n
3. Delhi High Court restrains use of Caf\u00e9 Social<\/h6>\n
4. Premium is confusingly similar to Premier for tissue papers, says the Madras High Court<\/h6>\n
Takeaways<\/h4>\n
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Disclaimer<\/h4>\n