Latest Trademark Cases in 2021 – Part 10

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Geetanjali Studio Private V. Nuxi To Kut N Kurl Private Limited

In this case, Geetanjali Studio Private, the Plaintiff filed an application under Order 39 Rule 1 and 2 of the Civil Procedure Code 1908 seeking prima facie ex-parte injunction to restrain Nuxi To Kut N Kurl Private Limited, the Defendant, from offering for sale of any services or goods under the marks GEETANJALI, GEETANJALI SALON, GEETANJALI STUDIO or any other identical or deceptively similar marks. The Plaintiff entered into a new franchise agreement with the Defendant, whereby the Plaintiff licensed the Defendant to use its trade mark on a non- exclusive basis for a certain payment. The Defendant failed to pay the franchise fee even after several reminders, thus, on 30.03.2021, the Plaintiffs sent an email to the Defendant demanding a total sum of Rs.3,83,210/- as an outstanding fee as a last measure. On failure of the Defendant to pay the fee within the given time, the Plaintiff terminated the franchise agreement by issuing a notice of termination on 06.04.2021. In June 2021, after the lockdown was lifted, it was found that the Defendant was using the Plaintiff’s trademark and running ‘Geetanjali Studio’ despite the termination notice, and a legal notice was sent to the Defendants on 28.06.2021. However, the Defendant continued to use the said trademark. The court found that the continued use of the trademark in question by the Defendant to be violating the Plaintiff’s rights, and restrained the Defendant from using the impugned trademark or any other or identical or deceptively similar mark to the Plaintiff’s trademark ‘GEETANALI’. The Defendant was ordered to comply within five days from the date of the order.

Citation: Geetanjali Studio Private vs Nuxi To Kut N Kurl Private Limited, Decided by the Delhi High Court on 21stSeptember, 2021, available at: https://indiankanoon.org/doc/18307181/ visited on 24thSeptember, 2021.

Brandzstorm India Marketing Pvt. v. L N Agency

In this case, the Plaintiff was the registered proprietor of the brand name “LUXXUBERANCE” and also a dealer of many internationally acclaimed and well-known brands for lifestyle products such as handbags and watches. The Plaintiff chose the Defendant to operate the franchise which was to be opened at Jamshedpur for the purpose of selling goods under the Plaintiff on a sale-or-return basis. Thereby a Letter of Intent (LoI) was executed between the parties and the Defendant agreed to make a security deposit of Rs 7.5 lakhs and the Plaintiff delivered stocks worth around Rs. 42 Lakhs to the Defendant. The Defendant was unable to generate service and the commission-related obligations in accordance with the LoI and sent an email to the Plaintiff intimating his decision to shut down the store by 1st May 2021. The Defendant claimed Rs. 52 lakhs from the Plaintiff citing the amount it had spent for the signage and setting up of the outlet in spite of the fact that the LoI clearly indicated that those expenses were to be taken from the Defendant’s account. The Plaintiff also submitted that the Defendant had not generated any income from the said franchisee set up. Though the Plaintiff stated that the LoI signed as a part of Franchise had come to an end, the Defendant still continued to use the Plaintiff’s registered trademark in order to sell many products. Thus, having made out a prima facie case and found the balance of convenience in favour of the Plaintiff, the court issued temporary injunction restraining the Defendant from dealing/ advertising/ marketing/ selling any goods with the Plaintiff’s registered marks or the other well-known trademarks owned by the Plaintiff. The court further ordered ad interim relief such that if any material/items were found at the Defendant’s outlet, the same would be seized by the Court Receiver and handed over to the Plaintiff and. The Court appointed an Additional Special Receiver, empowered and vested with the powers to take police assistance for successful execution of the commission. The order was held to be in operation till 20th October 2021 or until receipt of further order from the Court.

Citation : Brandzstorm India Marketing Pvt. … vs L N Agency, Decided by Bombay High Court on 21 September, 2021, available at :  https://indiankanoon.org/doc/160060846/, visited on 26th September 2021.

Saint-Gobain India Private Ltd. vs Geeta Kaler & Ors.

In this case, the Plaintiffs 1 to 4 an English, French, UK and Indian Company respectively were part of the SAINT-GOBAIN group of corporate entities which mainly dealt with the manufacture and sale of a variety of insulation systems, glass, building materials, water supply systems and so on across many international jurisdictions. The SAINT-GOBAIN group established its presence in the Indian market since 1996.  In India, the mark “GYPROC” was registered in the name of the Plaintiff-1 and the marks “SAINT-GOBAIN” and the label “SAINT-GOBAIN” were registered in the name of Plaintiff-2. They also owned a few other marks such as “GLASROC”, “GYPROC HABITO” and so on. Around May 2014, the Defendant-1 filed an application for the mark “GYPROCK” and the Registry in its objection cited Plaintiff-1’s mark “GYPROC” as the conflicting mark. The Defendant-1 claimed dissimilarity and did not respond to Cease and Desist notice issued by the Plaintiffs. The Plaintiffs filed an Opposition Notice and eventually the application was deemed to be abandoned. In 2017, another application for mark “SAND GOVIND GYPROCK” was filed by the Defendants 1 & 2, operating under the banner of the Defendant-3. The Plaintiffs initiated the opposition proceedings and this application too was abandoned. In 2020, the Plaintiffs discovered that the Defendants tried to trade under the marks “GYPROCK” and “SAND GOVIND GYPROCK” again. Hence, they filed this suit and the Court found sufficient prima facie case on the grounds that the Defendants’ mark was indistinguishable from that of the Plaintiffs’ and was a blatant imitation to take undue advantage of the phonetic, aural, structural and visual similarity between the said marks and to in turn trade upon Plaintiffs’ hard-earned goodwill and reputation. The Court granted an injunction restraining the Defendants from using the marks “GYPROCK”, “SAND GOVIND GYPROCK” or “SAND GOVIND GYPSUM CO” or the packaging/trade dress that might be similar or in any way identical to the registered marks “GYPROC”, “SAINT-GOBAIN” owned by the Plaintiffs. The order was held to be in operation till 26th October 2021 or until receipt of further order from the Court.

Citation: Saint-Gobain India Private … vs Geeta Kaler & Ors, Decided by Bombay High Court on 27 September, 2021, available at : https://indiankanoon.org/doc/173802317/, visited on 29th September 2021.

 

 

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