In this post, we bring to you Important Trademark Cases decided by Indian Courts in the year 2021

Kaira District Cooperative Milk Producers Union Ltd and Anr. V/S. Maa Tara Trading Co. and Ors

In this case, the Calcutta High Court passed an interim order against the Defendants, restraining them from using the trademark ‘Amul’ in connection with their products. The case was instituted by Kaira District Cooperative Milk Producers Union Ltd., who are the proprietors of the trademark ‘Amul’. It was contended in the plaint, that the Defendants incorporated the ‘Amul’ trademark with a deceptively similar font in the labels of candles marketed by them, which was alleged to be an act of trademark infringement. The Plaintiffs pointed out that the ‘Amul’ trademark was recognised as a well-known mark by the Trademark Registry, and as the Defendant’s products were being sold at cake shops and confectionaries, there exists a high likelihood that consumers would associate such infringing products with the Plaintiff. The Calcutta High Court passed an order of temporary injunction restraining the Defendants from using the ‘Amul’ mark until the disposal of the suit.

Citation: Kaira District Cooperative Milk Producers Union Ltd and Anr. V/S. Maa Tara Trading Co. and Ors. [G.A./1/2020 in CS./107/2020], Decided by the Calcutta High Court on 22nd March, 2021, available at: https://indiankanoon.org/doc/148365026/

Sony Corporation vs. K. Selvamurthy

In this case, Sony Corporation filed a trademark infringement suit claiming dilution of its well-known SONY trademark against a sole proprietor running a tours and travels business under the name, Sony Tours and Travels. After analyzing the facts before it, the District Court came to the conclusion that the Defendant did not take unfair advantage of, or cause detriment to the distinctive character or repute of the Plaintiff’s SONY mark. The Court came to this conclusion as Sony Corporation’s business is limited to electronics and media, which could be differentiated from the tours and travels business of the Defendant. The Court also noted that the use of the word, Sony by the Defendant did not cause any confusion among the consumers. It also took note of the inordinate delay of the Plaintiff in approaching the Court, and granted Defendants Rs. 25, 000/- as costs.

Citation: Sony Corporation Vs. K. Selvamurthy, Decided by Bangalore District Court on 18th June, 2021, available at: https://indiankanoon.org/doc/22176292/

Sun Pharmaceutical Industries Limited vs Cipla Limited

In this case, the Respondent/Plaintiff filed a suit for a permanent injunction before the Madras High Court against the Applicant/Defendant for infringement of its copyright and trademark. The Court herein, granted an interim injunction in favour of the Respondent/Plaintiff. Henceforth, the Applicant/Defendant filed three applications with a plea to vacate the interim relief granted on grounds of urgency. The plea was based on the fact that the drugs were of a huge amount, carried an expiry date of 1 year, and were in demand because of the ongoing pandemic as they helped in relieving the Covid-19 symptoms. The Court held that the Respondent/Plaintiff had made out a prima facie case for continuance of the interim order as the balance of convenience continued to be in their favour. While holding so, the Court pointed out that they cannot allow a party to violate another person’s IPR, notwithstanding the fact that the country was facing an unprecedented medical emergency. The Court upheld the interim order and held that it shall continue to remain in force subject to the final decision of the suit.

Citation: Sun Pharmaceutical Industries Limited vs. Cipla Limited … Decided by Madras High Court in May, 2021, available at: https://indiankanoon.org/doc/95848712/

V Guard Industries Ltd vs Sukan Raj Jain & Anr.

In this case relating to allegations of “V Guard” trademark infringement, the Defendants argued against the territorial jurisdiction of the Delhi High Court as Plaintiff and Defendants did not have their principal businesses in Delhi. The alleged infringing products were being offered for sale, advertised, and sold through online portals. After reviewing the facts, the Court came to the conclusion that it had the territorial jurisdiction because the product bearing the mark was advertised and sold in Delhi through online means and held that, if some part of cause of action has arisen at a place where the Plaintiff has its branch/subordinate office, Courts at that place will have jurisdiction to entertain a suit against infringement and passing off. In other words, the occurrence of cause of action or any part thereof, at a place, is held to be a determining factor, both under Section 20 CPC, and Section 134 of the Trade Marks Act, to attract jurisdiction of the court at such place. ”

Citation: V Guard Industries Ltd vs Sukan Raj Jain & Anr., Decided by Delhi High Court on 5 July, 2021, available at: https://indiankanoon.org/doc/166471642/

ITC Limited vs Maurya Hotel (Madra) Pvt Ltd

In this case, the Madras High Court allowed the Plaintiff to add a relief for trademark infringement to a passing off suit based on subsequent registration of the trademark by the Plaintiff. The Court in the case pointed out that adding a relief is permitted, and helps in avoiding multiplicity of suits. It also stated that the outcome might be different if the application was for conversion of the plaint from the relief of passing off to infringement.

Citation : ITC Limited vs Maurya Hotel (Madra) Pvt Ltd, Decided by Madras High Court on 22nd July, 2021, available at: https://indiankanoon.org/doc/36231681/

Reliance Industries Limited And Anr. Vs Ashok Kumar

In this case, Reliance Industries Limited, the Plaintiff, found a hardware fittings and bathroom accessories retailer using their well-known mark ‘JIO’ and hence filed a trademark & copyright infringement suit before the Bombay High Court. The Defendant on 11th June, 2021 had filed two applications for registration of the mark JIO and pirated artwork which were advertised, claiming use since 16th December, 2016. The court noted that the Defendant not only copied Plaintiffs’ mark, logo and artwork but also added an image of a leaping jaguar which violated Jaguar Land Rover’s intellectual property as well. The Plaintiffs filed an interim application praying for injunction against Defendant’s use of its copyright and trademark until the final disposal of the suit. The Court was of the opinion that an overwhelming prima facie case and balance of convenience lied in Plaintiffs’ favour, and irretrievable prejudice would be caused if the reliefs sought were denied. Hence, the court granted a temporary injunction and gave the Defendant the liberty to apply for a variation, modification or recall of the order after 7 days’ notice to the Plaintiffs’ Advocates. Finally, the court listed the matter hearing on further ad-interim relief on 30th September, 2021.

Citation: Reliance Industries Limited And Anr. Vs Ashok Kumar, Decided by Bombay High Court on 23rd August, 2021, available at: https://indiankanoon.org/doc/58666138/

Sony Pictures Network India Pvt. Ltd. V/S The State Of Maharashtra & Anr.

In this case, an FIR was filed by Karad Urban Co-operative Bank (KUCB) for defamation by the web series ‘Scam 1992: The Harshad Mehta story,’ which aired on SonyLIV App. The FIR accused Sony Pictures Network India Pvt. Ltd. and others of offences punishable under Section 500 of IPC and Sections 102 and 107 of the Trade Marks Act, and Sections 66C and 43(b) of the Information Technology Act. In its FIR, the bank alleged that in the third episode of the web series, a logo displayed in the background resembled its trademark, causing severe damage to its financial, commercial and social reputation. Aggrieved by the FIR the accused filed two criminal writ petitions seeking a stay on investigations. The Bombay High Court heard both the matters jointly wherein the petitioners sought the stay on three grounds. Firstly, as per Section 115(4) of the Trade Marks Act, 1999, investigation couldn’t be done by an officer below the rank of Deputy Superintendent of Police, but the said FIR was being investigated by a police inspector. Secondly, alleged offence under Section 500 of IPC was non-cognizable could not be investigated by police on the basis of an FIR. Lastly, that the web series did not come within scope of Trade Marks Act, 1999 based on Prateek Chandragupt Goyal Vs. The State of Maharashtra & Anr, wherein same court held that mere use of trademark in an article does not amount to false application. Convinced by all the three grounds the Court stayed the investigations until the next date of hearing i.e., 17th September, 2019.

Citation: Sony Pictures Network India Pvt. Ltd. v/s The State of Maharashtra & Anr. Decided by Bombay High Court on 23rd August, 2021, available at: https://indiankanoon.org/doc/75179673/

Agatha Christie Limited vs Registrar Of Trade Marks.

In this case, Agatha Christie Limited filed a trademark application for the mark, “And Then There Were None.” The Registrar rejected the application, and the Agatha Christie Limited appealed. The Delhi High Court came to the conclusion that there was no ground based on which the mark could have been rejected under the Trademarks Act, 1999, as the mark was not descriptive and because no similar marks were existing on the Register. It also pointed out that the mark was distinctive, and asked the Registrar to register the mark.

Citation: Agatha Christie Limited vs Registrar Of Trade Marks, Decided by Delhi High Court on 8 December, 2021, available at: https://indiankanoon.org/doc/183502564/

N. Ranga Rao & Sons Private Ltd. v. Sree Annapoorna Agro Foods

The Plaintiff, engaged in the business since 1948, was a leading manufacturer and supplier of incense sticks and other allied products. It held several trademarks, of which the mark ‘CYCLE’ was in dispute in this case. The Defendant herein adopted the mark ‘CYCLE’ concerning edible oil. Plaintiff claimed that the mark was immensely popular and owing to its wide turnover and extensive sales and promotional activities, the trademark CYCLE was a well-known mark. The Plaintiff filed the suit under Sections 27, 28, 29, 134 and 135 of Trade Marks Act, 1999 and claimed that Defendant intended to take undue advantage of its reputation and goodwill. It was further claimed that such use caused unwarranted confusion among the public and amounted to clear infringement of Plaintiff’s registered trademark.

The Court stated that the burden was on the Plaintiff to prove (i) its reputation in India; (ii) that the Defendant was using the mark without due cause; (iii) that by using the mark without cause the Defendant took unfair advantage, or it was detrimental to the distinctive character or reputation of the Plaintiff’s registered trademark.

The Court found that the Plaintiff proved only reputation regarding goods related to incense sticks and failed to prove that the Defendant was using the mark without due cause or taking unfair advantage. Further, no evidence was led by Plaintiff to show that the use of the mark by the Defendant was detrimental to or caused dilution to the Plaintiff’s reputation. The Court noted that though the mark CYCLE was a common household item and a generic word the distinctiveness acquired by the Plaintiff was restricted to the goods for which it had registration, and it could not obtain a monopoly over the word or claim exclusive right across other classes of goods. In view of the findings the Court dismissed the suit.

Citation: N. Ranga Rao & Sons Private Ltd vs Sree Annapoorna Agro Foods, Decided by Madras High Court on 18 November, 2016, available at: https://indiankanoon.org/doc/25237434/

Guccio Gucci. Vs Intiyaz Sheikh

In this case, the Plaintiff, Guccio Gucci S.P.A. filed a suit for permanent injunction against Defendant, Intiyaz Sheikh so as to restrain him and persons claiming under him from infringing its trademark, copyright, passing off, unfair trade competition, rendition of accounts, delivery up, etc. The Plaintiff had been advertising its products bearing its IP, registered in many countries, through various printed media including newspapers, magazines, internet and trade journals, leaflets and other promotional literature. Plaintiff in its course of market survey came to know that the Defendant was illegally manufacturing socks using Plaintiff’s registered “green and red stripes” logo and mark “Gucci” in its entirety. The Court had passed an ex-parte ad-interim injunction. At the later stages of the suit the Court noted that the Defendant deliberately chose not to participate in the proceedings despite the pendency. The Court reasoned that a civil case proceeded on the doctrine of preponderance of probabilities and not on proof beyond reasonable doubt. Although mere non−appearance of Defendant could not be inferred against him, but in view of overall facts, coupled with the evidence on record along with the report of local commissioner, the Plaintiff was successful in establishing the case in its favour. The Court decreed a permanent injunction against the Defendant and directed him to handover all the infringing goods to the Plaintiff as well as pay ₹2,00,000/- and ₹1,66,000/- as costs and damages respectively.

Citation: Guccio Gucci… vs Intiyaz Sheikh, decided by District Judge (Commercial Court), Tis Hazari Court, Delhi on 27th August, 2021, available at: https://indiankanoon.org/doc/178127761/

Jumeirah Beach Resort Llc vs Designarch Consultants Pvt Ltd.

In this case, Jumeirah, the hotel and trademark owner of “Burj Al Arab,” filed a case against a real estate/construction company, which was using the marks Burj Noida, Burj Bangalore, Burj Mumbai and so on. Jumeirah asked for an interim injunction during the pendency of the suit. The Defendant also had registrations over its marks, and argued that Jumeirah does not hold any rights over the word ‘Burj,’ which means tower. After reviewing the facts and arguments, the Delhi High Court allowed the Defendant to use Burj Noida for its ongoing project, but restrained the Defendant from using Burj Bangalore, Burj Mumbai and so on. While arriving at its conclusion, the Court stated that Burj is the essential part of Jumeirah trademark, and that well knownness of the mark has to be established on trial.

Citation: Jumeirah Beach Resort Llc vs Designarch Consultants Pvt Ltd., Decided by Delhi High Court on 9 November, 2021, available at: https://indiankanoon.org/doc/88013685/

Bacardi And Company Limited vs Bahety Overseas Private Limited & others

Bacardi filed a trademark infringement and passing off case against Bahety with respect to its products sold under the registered trademark, BREEZER, and its trade dress. The suit was filed against Bahety’s use of the marks, Freeze and FreezeMix’ for non-alcoholic drinks, which were being sold in bottles having design similarities. After looking at the usage of the marks and bottle designs, the Court came to the conclusion that Bahety was using the trademark, FreezeMix, by writing it in a manner similar to Bacardi’s Breezer. According to the Court, the emphasis was on the word ‘Freeze,’ which was being used in a prominent manner along with bottles bearing similar designs. It stated that the bottle of Bahety included a similar champagne base, ridges and bottle top. Though Bacardi was selling alcoholic drinks and Bahety, non-alcoholic drinks, the Court came to the conclusion that there was infringement as there was consumer association between the products. The Court went on to grant an interim injunction in favour of Bacardi restraining Bahety from using the trademark FreezeMix and related trade dress.

Case citation: Bacardi And Company Limited vs Bahety Overseas Private Limited & Others, Decided by Delhi High Court on 12 November, 2021, available at: https://indiankanoon.org/doc/48139811/


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Disclaimer

Please note that these case updates have been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the decisions published in the bulletin. You may write to contact@bananaip.com  for corrections and take down.

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