Intellectual Property (IP) law is a dynamic and ever-evolving field, with Indian High Courts frequently making decisions that influence its course. In this blog post, our team of skilled IP attorneys at BananaIP has carefully compiled summaries of five recent IP cases. These cases cover a range of issues, from trademark disputes to the nuances of digital advertising, reflecting the diverse challenges in the IP sector. Our objective is to share knowledge and insights in a straightforward and accessible manner, helping readers understand the complexities of these significant rulings.
Institute of Directors Vs. Directors’ Institute: The Delhi High Court holds that the trademark ‘Institute of Directors’ is descriptive, and refuses an interim injunction against the use of ‘Directors’ Institute’.
In a case involving the trademarks, ‘Institute of Directors’ and ‘Directors’ Institute’, the Delhi High Court stated that the plaintiff failed to make out a prima facie case, and refused to grant an interim injunction. As admitted by the plaintiff in its examination response filed before the trademark office, the Court stated that the phrase ‘Institute of Directors’ is descriptive and that no trademark protection can subsist with respect to the said words. As the mark was descriptive, the Court observed that the use of a similar mark by the defendant would not give rise to infringement. Additionally, the Court also stated that the plaintiff’s act of suppressing the examination report from the Court would disentitle it from getting an equitable remedy in the form of an interim injunction.
Citation: Institute of Directors v. Worlddevcorp Technology & Business Solutions (P) Ltd., 2023 SCC OnLine Del 7841.
Ex-employee injuncted from using student list, course curriculum, and course materials.
In a case relating to confidential information including a list of students, course curriculum, and course materials, of a company that provides technological education and certifications, the Delhi High Court granted an interim injunction against the defendant, restraining him from using the student list or course materials. The defendant in the case was an ex-employee of the plaintiff, who was contacting the plaintiff’s clients/students and using the course materials to provide competing certifications. The Court stated that both the list of clients and course materials are confidential information of the plaintiff, which cannot be used by the defendant based on the non-disclosure agreement and confidentiality clauses in the employment agreement.
Citation: IN THE HIGH COURT OF DELHI AT NEW DELHI, O.M.P.(I) (COMM.) 374/2023.
‘WOW” Vs. ‘WQVV’ Trademarks for Personal Care and Cosmetic Products: Delhi High Court injuncts use of ‘WQVV’ and other marks similar to ‘WOW’.
In a case involving the trademarks, ‘WOW’ and ‘WQVV’ for personal care, household, and cosmetic products, the Delhi High Court granted an interim injunction against the use of ‘WQVV’ by the defendants, which was written in a manner similar to ‘Wow’. After comparing the products, the Court stated that the trademarks were similar, and so was the trade dress of the products. The Court also asked Amazon, Flipkart, and Snap Deal to take down ‘WQVV’ products.
Citation: IN THE HIGH COURT OF DELHI AT NEW DELHI, CS(COMM) 883/2023, I.As. 25022/2023.
Use of competitor trademarks as keywords in Google Ads does not amount to trademark infringement in the absence of confusion or unfair advantage, reiterates Delhi High Court.
In a case involving MakeMyTrip and booking.com, the Delhi High Court stated that the use of MakeMyTrip trademarks by booking.com as keywords in the Google ad program does not amount to trademark infringement. In the case, MakeMyTrip argued that Google is displaying booking.com when users searched using its trademarked keyword ‘MakeMyTrip’, which gives rise to trademark infringement on behalf of both Google and booking.com. Stating that mere use of trademarks as keywords would not amount to trademark infringement unless confusion or unfair advantage is shown, the Court reversed an interim injunction granted earlier by the Single Judge in favour of MakeMyTrip.
Citation: IN THE HIGH COURT OF DELHI AT NEW DELHI, FAO(OS)(COMM) 147/2022 & CAV 155/2022 & CM Nos. 27148/2022 & 27149/2022
Khaitan Vs. Khaitar for Fans: The Calcutta High Court grants interim injunction against use of ‘Khaitar’ trademark.
In a case involving the trademarks, Khaitan and Khaitar, for fans, the Calcutta High Court granted an interim injunction against the use of ‘Khaitar’ by the defendant. The Court stated that the marks were phonetically and visually similar, which would give rise to deception and the likelihood of confusion among consumers. As there was no valid reason for the defendant to adopt the mark, the Court stated that prima facie case in favour of the plaintiff was strong.
Citation: Khaitan India Limited v. Khaitar Industries Private Limited, 2021 SCC OnLine Cal 468
The judgements from these cases offer valuable lessons and guidance in the field of IP law. At BananaIP, we believe in sharing our expertise and insights to enhance understanding and informed decision-making. These summaries are not just about the outcomes of legal disputes; they represent the evolving narrative of IP law in India. Our focus is to demystify these legal complexities, providing clarity and perspective to those navigating the IP landscape.
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