Intellectual Property Insights: Trademark Case Updates from Indian High Courts

As Intellectual Property (IP) law continues to adapt and evolve, recent judgements from Indian High Courts provide vital insights into its current trajectory. This blog post examines four notable cases, each shedding light on different aspects of IP law, from trademark infringement to the nuances of well-known trademarks. The aim is to offer a clear and concise overview of these significant rulings, enhancing understanding for professionals and enthusiasts in the field of IP law.

Use of ‘Silk’ to describe the finish of a paint is not prima facie infringing, says Calcutta High Court.

In a  trademark infringement case between Berger Paints and JSW Paints, the Calcutta High Court stated that Berger Paints did not have a prima facie case with respect to the infringement of its trademark, Silk, for paints. The Court stated that the use of the word ‘Silk’ on the label of the defendant to refer to the finish of the paint does not give rise to infringement. It also noted that the trademark registration over ‘Silk’ was limited to its particular presentation, and did not cover all uses of the word.

Citation: Berger Paints India Ltd. v. JSW Paints (P) Ltd., 2023 SCC OnLine Cal 4949

House of Diagnostics Vs. House of Pathology: Copying the trademark idea, Layout, and Content amounts to prima facie trademark infringement, says Delhi High Court.

In a case filed by House of Diagnostics against House of Pathology, the Court stated that the plaintiff had made out a prima facie case of trademark infringement, and granted an interim injunction in its favour. The Court observed that the the defendant copied the plaintiff’s trademark idea by copying ‘House of’, and by using the acronym HoP in a layout similar to that of the plaintiff’s trademark. As per the Court, the fact that the website content was also similar substantiates the plaintiff’s case.

Citation: House of Diagnostics LLP v. House of Pathology Labs (P) Ltd., 2023 SCC OnLine Del 7708

Is Rose Shaped Lollipop protectable as a trademark? The Delhi High Court says ‘No’.

In a case involving a lollipop sold in the shape of a rose, the Delhi High Court set aside the interim injunction granted by the Commercial Court in favour of the plaintiff. While setting aside the injunction, the Court stated that the plaintiff was not able to prove acquired distinctiveness with respect to rose-shaped lollipops, and that use of flowers for confectionary was common. The Court also pointed out that registering one shape of a rose flower does not give protection over all variations of the shape with respect to all flowers.

Citation: IN THE HIGH COURT OF DELHI AT NEW DELHI, FAO (COMM) 199/2021& CM APPL. 44021/2021.

‘AtomBerg’ is a well-known trademark, declares the Bombay High Court.

The Bombay High Court has declared ‘AtomBerg’, which is used for home appliances, primarily fans, as a well-known trademark. The Court stated that the trademark satisfies the requirements for well-known status because:

  1. The trademark ‘AtomBerg’ is inherently distinctive requiring the highest standard of protection;
  2. The trademark has acquired goodwill and reputation across India; and
  3. The plaintiff has taken appropriate steps to restrain infringements of the mark.

As a result, the Court stated that the protection of the mark surpasses classes 7 and 11 in which it has been registered, making it eligible for well-known status.

Citation: IN THE HIGH COURT OF JUDICATURE AT BOMBAY, CS (COMM) 323/2023 & I.A. No. 30248/2023.

These recent decisions from Indian High Courts are key in shaping the landscape of IP law. Our aim with these summaries is to offer essential insights into how these rulings influence IP practices, valuable for legal experts, business professionals, and academics in understanding and navigating the dynamic world of Intellectual Property.

If you have any questions, speak with an IP expert/attorney – [email protected] or 91-80-26860414/24/34.