Download Post as PDFPrint this PostThis week’s Patent and Design...Read More
Latest Trademark Cases in 2021 – Part 11
Intellepedia IP Radio
Avtar Singh & Ors. v. Sakshi Srivastava & Anr.
There were four Plaintiffs in this case, i.e., Mr. Avtar Singh, Mr. Harkirat Singh, Aero Traders Private Ltd. and Aero Associates Pvt. Ltd., who co-owned M/s Aero Club. They filed an application for the trademark “WOODS” in the club’s name firstly in 1994 and 1996 under Class 25 and in 2017 under Class 3. The Plaintiffs together subsequently registered trademarks “WOODLAND”, “WOODLAND” (stylised) and other “WOODLAND” marks on varying dates in compliance with Section 28 and 31 of the Trademarks Act, 1999. They had pending registration for trademarks “WOODS” (word) and “WOODS” (stylised) under Class 18. The two Defendants in this case jointly owned M/s Siddhi Vinayak Clothes and Concepts. Defendant 1 also registered trademarks with the same names as the Plaintiffs’, as well as “WOODLEY” under Class 18 and 35. On October 4th, 2021, the Plaintiffs filed an opposition under Classes 18, 25 and 35 on the grounds that the Defendants have dishonestly adopted the Plaintiffs’ impugned mark “WOODLEY”. The Plaintiffs argued that the Defendants’ mark “WOODLEY” was deceptively, visually and phonetically similar to the Plaintiff’s marks “WOODLAND” and “WOODS”. The style and font of “W” on the Defendants’ device or label “WOODLEY” was also virtually identical, along with the identical colour scheme of blue background with white font colour. The Defendants contended that there was unreasonable delay on the part of the Plaintiffs in the filing of the suit and that that the word “wood” cannot have any exclusivity over it as it is non-distinctive and generic. The Defendants’ mark “WOODLEY” is also phonetically pronounced “wad-lee”, which is different from the Plaintiff’s marks and the logos as a whole has many differences in styling, colour schemes and font size. The Defendants also claimed that they were under litigation for the issue of similarity before the specialized authority i.e. the Trademark Registry for the last 3 years, so this case filed by plaintiff was to hasten those proceedings. The Delhi High Court observed, in favour of the Plaintiffs, that a mark should not always be looked at in totality because some elements of mark could be deceptively similar. The Court also observed that the similarity test is to be applied differently for different economic classes, which was an argument in the favour of the Defendants, as their targeted buyers were not on the affluent side unlike the Plaintiffs’. The Court also observed that the Defendants submitted that they would only use their trademarks under class 25 and class 35 and not use blue colour. The Court ruled in favour of the Plaintiffs and allowed the interim order mainly because the Plaintiffs had a prima facie case against the defendant.
Citation: Avtar Singh & Ors. v. Sakshi Srivastava & Anr., Decided by The Supreme Court on 4th October, 2021, available at: Avtar Singh & Ors. v. Sakshi Srivastava & Anr.,last visited on 6th October, 2021.
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/, last visited on 10th November, 2021
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/, visited on 14th November, 2021.
Latest Trademark Cases in 2021
This post is brought to you by BananaIP’s IP Consulting & Strategy Department.
BananaIP’s IP Consulting & Strategy Department has the experience of helping companies use IP for business and competitive advantage. Companies regularly seek their assistance, advise and opinions on identifying/mining inventions and creations, conducting IP audits, protecting IP assets appropriately, launching risk free products, managing litigation for business benefit, resolving disputes out of Court, making money out of IP, enforcing IP, and licensing transactions.
Updates on recent orders and judgments are brought to you jointly by the Entertainment Law and Consulting/Strategy Divisions of BananaIP Counsels, a Top ranked IP Firm in India. If you have any questions, or need any clarifications, please write to email@example.com with the subject: Trademark Judgements
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 firstname.lastname@example.org for corrections and take down.